



Glass. 
Book. 



EEPORT jS4 



COPYRIGHT CASE 



WHEATON V. PETERS. 



IN THE SUPREME COURT OP THE UNITED STATES. 



AN APPENDIX, 



CONTATKING THE ACTS OF CONGRESS RELATING TO COPYRIGHT. 



Omnia pr<E$UTnuntur in odium spoliatoris. 



NEW-YORK ; 

PRINTED BY JAMES VAN NORDEN, 

No. 49 William-street. 

1834. 






IL 



t 

^ 



TO THE HONOURABLE JOHN MARSHALL, CHIEF JUSTICE 
OF THE UNITED STATES : 

Sir, 

The Report of this Cause is most respectfully dedi- 
cated to you, as a tribute due to your unequalled ability 
and usefulness ; to the greatness of your character ; the 
purity of your motives ; and the kindness of your judi- 
cial deportment, 

By your most obedient servant, 

THE REPORTER. 



IN THE 

SUPREME COURT OF THE UNITED STATES, 

JANUARY TERM, 1834. 
IN EQUITY. 



HENRY WHEATON [AND ^ROBERT DONALDSON, ICITIZENS OP THE STATE OP NEW- 
YORK, VS. RICHARD PETERS AND JOHN GRI&G, CITIZENS OF THE STATE OF 

PENNSYLVANIA. 



This cause came up by appeal from a decree of the Circuit Court 
of the United States, for the Eastern district of Pennsylvania, pro- 
nounced by the district judge. 

The bill, which was sworn to by the complainant, Robert Donald- 
son, was filed in May, 1831, and prayed an account of the profits 
of the third volume of Peters' Condensed Reports, published by 
the defendants, and containing the first volume of Wheaton's Re- 
ports, of which the copy-right was claimed by the complainants. 
The bill also prayed that the defendants might be restrained by 
injunction from any further sales of said third volume of Condensed 
Reports, and from publishing in continuation, as they threatened 
to do, the remaining eleven volumes of Wheaton's Reports. 

It was alleged in the bill, that Mr. Wheaton was the author of 
the twelve volumes of Reports of Cases argued and adjudged in the 
Supreme Court of the United States, and commonly known as 
"Wheaton's Reports, commencing in 1816, and ending in 1827. 
That he commenced and discharged his duties as reporter, with 
the approbation and by the appointment of the court ; and that as 
an inducement to undertake the task, and attend the terras of the 
court, the justices of the court engaged to furnish to him alone, and 
for his sole benefit, with all such writings or memoranda as they 
might make of their decisions, and which would aid him in reporting 
the cases. That he accordingly made the business of reporting 
for said court his chief employment, having always left his resi- 
dence and business in the city of New- York to attend the sittings 
of the court at Washington, and having devoted himself during 
the terms to taking notes of the cases, arguments, and decisions, 
and to compiling such materials as were necessary for his reports. 
That no one besides him attended the court to take such notes or 

1 



compile such materials, and that the justices never furnished 
their opinions or any notes of their decisions to any other per- 
son ; that he alone preserved those and the other materials from 
which his volumes were formed ; and that having retained such 
materials in his possession exclusively, he finally destroyed them. 

The bill further stated, that soon after the end of each term, Mr. 
Wheaton published a volume containing the cases decided. That 
prior to the publication of the first volume, he sold the copy-right to 
Matthew Carey, of Philadelphia. That said Carey caused the title- 
page of said volume to be deposited and recorded in the clerk's 
office of the district court, and the record imprinted on the title-leaf 
of the volume ; and that the complainants had been informed by 
said Carey and believed ; that all things required to be done by the 
acts of Congress, in order to secure the copy-right, had been done. 
The bill then stated that the complainant, Robert Donaldson, had 
subsequently become the proprietor of the copy-right of said volume, 
by assignment from said Carey. It was further stated, that at the 
expiration of the term of fourteen years, for which the copy-right 
was secured, it was again secured for a second term, by recording 
the title-page in the clerk's office for the southern district of New- 
York, where Mr. Wheaton resided, and by publication of the record 
in the newspapers, and a delivery of a copy to the secretary of state. 

The bill further stated, that prior to the publication of the second 
and the residue of the twelve volumes, Mr. Wheaton caused the title- 
page of each volume to be recorded in the clerk's office, and the 
record to be imprinted on the title-leaf, and himself attended to the 
performance of the acts necessary to secure the copy-right, and to 
the delivery of a volume to the secretary of state ; and that the 
complainant, Robert Donaldson, on inquiry at the secretary of 
state's office, had been informed that a copy of each of said 
volumes was received there within six months after publication, 
placed in the room appropriated to copy-right books, and has ever 
since been preserved there, which he believed to be true. That the 
complainant, Henry Wheaton, was then absent at Copenhagen, 
where he represented the government of the United States, near 
the court of Denmark, and that the complainant, Robert Donaldson, 
had been unable in his absence to procure or receive any information 
from him to enable him to file said bill ; but that from information 
formerly received from him, the said Robert Donaldson ha no 
doubt that a copy of each volume was delivered to the secretary of 
state, within six months after publication. That no record or me- 
morandum being required by law to be kept of the delivery of a 
copy to the secretary of state, and the same having in many cases 
been omitted to be made, and there having been in this respect 



the greatest irregularity in the state department, and as the copy- 
right books delivered to the secretary of state were regarded by 
those belonging to the department in no other light than as forming 
a library for the department, and were accordingly so received, 
treated, and used, being often lent out, and being subject to be taken 
away by those officers of government who had occasion to use them, 
it was impossible to obtain proof from the department whether a 
copy of each of said volumes was so delivered to the secretary of 
state. That, from an examination which the complainants had 
caused to be made in the state department, it appeared that in a 
great majority of the cases in which books had been copy-righted, 
the department afforded no evidence whether a copy had been de- 
livered there agreeably to the provisions of the copy-right laws. 

That for these reasons, and from the lapse of time, in the absence 
of said Henry Wheaton, it was impossible to furnish any other evi- 
dence of the delivery of the copies, than had been thus stated in the 
bill. But it was insisted that if the complainants had been, or should 
be unable to prove that the copies were delivered in conformity with 
the provisions of the acts of Congress, the complainants would still 
be entitled to the benefit of said acts. 

The bill further stated, that the complainant, Robert Donaldson, 
before the publication of the second and subsequent volumes, ac- 
quired, by assignment from the complainant, Henry Wheaton, a right 
to publish an edition of each volume of from ten to fifteen hundred 
copies. That a large portion of the edition of each volume still re- 
mained unsold, the property on hand amounting to between twenty- 
five and thirty thousand dollars. 

That until the publication of the said Condensed Reports, the com- 
plainants had been in the uninterrupted enjoyment of the copy-right 
of Wheaton's Reports ; and that until said publication was contem- 
plated, their right to the copy of Wheaton's Reports had never been 
doubted, questioned, or invaded. The bill then charged the pub- 
lication of said third volume of Condensed Reports, edited by the de- 
fendant, Peters, and issuing from the press of the defendant, Grigg, 
in Philadelphia, in 1831 ; that it contained, without any material 
alteration or abreviation, all the reports of cases contained in the first 
volumeof Wheaton's Reports; that the defendants had sold and had 
ready for sale a great number of copies of the work, and had made 
large profits by the sale; and that they threatened and intended to 
continue the publication of the remaining volumes of Wheaton's 
Reports in succeeding volumes of the Condensed Reports; which in- 
tention was avowed in the printed circulars published by them, and 
annexed to the bill. And it was alleged that the advertisement of 



the Condensed Reports, and their publication, had entirely saspended 
the sale of Wheaton's Reports. 

The first of the circulars annexed to the bill was entitled, " pro* 
posals for publishing, by subscription, the cases decided in the Su- 
preme Court of the United States, from its organization to the close 
of January term, 1827," and was dated, Philadelphia, June, 1828. 
After observingon the great importance of the decisions of the court., 
and of their being extensively known, and stating that in some parts 
of the country few copies of the reports were to be found, the circular 
proceeded : 

" It will not be denied that these circumstances are the conse- 
quences of the heavy expense which must be incurred by the pur- 
chase of the two volumes of the Reports of Mr. Dallas, the nine 
volumes of Mr. Cranch, and the twelve of Mr. Wheaton's Reports j 
together twenty-three volumes — the cost of which exceeds one hun- 
dred and thirty dollars. 

"It is proposed to publish all the cases adjudged in the Supreme 
Court of the United States from 1790 to 1827, inclusive, in a form 
which will make the work authority in all judicial tribunals, and to 
complete the publication in not more than six volumes, the price of 
which shall not exceed thirty-six dollars. The opinion of the court 
upon all the points decided in every case will be given in the language 
of the court expressing the determination, and such a statement or 
abstract of the facts on the office record of the cause will be made, 
as will fully and accurately exemplify the decisions of the court. 
The reports this day published will continue the series. 

" The matter will not be abbreviated so as to omit any thing which 
is important, or may be in any manner a part of the essential features 
of the case. 

"An abridgment' is not contemplated: the work is intended to be 
of a higher order; and it will only be from want of ability in the 
editor, if it does not contain a complete and faithful representation 
of the material and useful parts of every case adjudged by the court, 
up to the period stated. If there are any unpublished cases decided ' 
by the court, and the editor can obtain them, they will be inserted 
in this work. 

"An effort will be made to give a reference in each case to the pa- 
rallel cases which have been decided by the court, and, in some in- 
stances, the reported and manuscript decisions upon the same ques- 
tions, in the circuit courts of the United States, will be noted. 

" Each case will be preceded by a copious syllabus, itself a digest of 
the matter it contains ; and, after the work shall be completed, all 
this matter will be arranged in a supplemental or general index, ia 



which will be also included abstracts of the cases which may be con- 
tained in the volumes the editor, as the reporter of the decisions of 
the court, may publish hereafter, prior to the period when he shall 
have fully executed the contemplated work. This may form an ad- 
ditional volume, if the profession and the public shall require it. 

" It is not considered that the work now announced, and part of the 
materials for which are arranged, will interfere with the interests of 
those gentlemen who have preceded the reporter in the station he has 
the honour to hold. Deeply as he is impressed with the alsolute ne- 
. cessity of the work announced, he would exceedingly regret such an 
interference. Their volumes will always be standards for reference, 
and of the highest authority ; and every member of the profession who 
has ability to purchase them, will own them. The legal rights of 
the proprietors of those most able and valuable works will be care- 
fully respected. Nothing will be inserted in the contemplated pub- 
lication but matters which are of public record, and which, from their 
very nature, cannot be the subject of literary property. The opin- 
ions of the court, which are public property, are referred to. 

" Indeed, the work proposed, like the Digest of Mr. Wheaton, in 
which was included all the points reported as decided in the volumes 
of Mr. Dallas and Mr. Cranch, will, it is believed, increase the demand 
for the original reports, as their superior merits and accuracy will, 
by its means, become more generally known." 
The second circular was as follows : 

"Washington, March 2, 1831. 
"Mr. John Grigg, Philadelphia, 

" Dear Sir : Your letter of the 28th ultimo, communicating a 
copy of a letter from Mr. O. Halstead, of New-York, under date of 
the 26th of February, has been received. 

"In that letter, Mr. Halstead states that he is 'threatened with a 
prosecution if he sells the third volume of the Condensed Reports of 
Cases in the Supreme Court of the United States,' edited by me, ' as 
it contains a condensation of the first volume of Wheaton's Reports.' 
Mr. Halstead also says, ' I should be pleased to sell the work, and 
no doubt I could dispose of a number of copies, but do not wish to 
involve myself in difficulty.' 

" The prudence and caution of Mr. Halstead are proper, and I do 
not complain of them. It is for myself, who have undertaken the 
publishing of this work, with a firm determination to complete it, to 
encounter every 'difficulty' which may attend, the same. 

" I have heretofore stated to you in writing, and I now repeat the 
declaration, that I am ready to encounter those difficulties, nor do I 
ask any one to share them. I have said it, and I now repeat the 



10 

assurance, I will indemnify and save harmless from all costs and dama- 
ges all who publish or sell the work. 

" The prospectus of the Condensed Reports has been before the 
public for upwards of two years. In that prospectus it was distinctly 
and explicitly avowed, and the same is stated in the title-page'of the 
first and second volumes, published in 1830, that the work will contain 
' the whole series of the decisions of the Supreme Court of the United 
States from its organization to the commencement of Peters' Reports 
in 1827.' In express terms, the prospectus declares, ' that the Con- 
densed Reports would contain the cases found in the volumes of 
Mr. Dallas, the nine volumes of Mr. Cranch, and the twelve volumes 
of Mr. Wheaton.' 

" Thus, sir, all those who ' threaten a prosecution,' have had a full 
knowledge of the entire scope and purpose of this work for the period 
mentioned, and no application has been made to any judicial tribu- 
nal to stay its progress. Nor is this all : as soon as my work was 
announced, I was applied to by a gentleman of New- York, a book- 
seller, and was required to relinquish it, on the ground that it would 
violate his copy-right in the Reports of Mr. Wheaton. He ' threat- 
ened' me with the consequences of going on in my purpose. To 
this I replied, promptly, that I would proceed with the publication, 
and that he was at liberty to employ all legal means for the mainte- 
nance and protection of his rights, if any existed. It is known that 
the laws of the United States relative to copy-right afford those means; 
an injunction may be obtained, if a copy-right has been secured in a 
work, to prevent the publication of any work which will interfere with 
the property so secured. The injunction will be perpetuated if cause 
exists, and the protection will be permanent. Any injury which the 
proposal of the unlawful publication may have threatened, will be 
remedied, and the notoriety of judicial proceedings will restore the 
author or proprietor of the original work to all the rights and benefits 
of his copy-right. It is not necessary that the rival work shall have 
been published to give the court jurisdiction in the case : the proposi- 
tion to publish it is a sufficient foundation for the action of the courts 
of the United States to proceed by injunction, under the acts of Con- 
gress. Why, therefore, it is asked — nay, it is demanded, — has not 
this — have not other measures, of an equivalent character been re- 
sorted to by those who have ' threatened,' and do ' threaten,' to 
prosecute for the publication of my Condensed Reports ? It is be- 
cause those who thus ' threaten,' know there is no copy-right for the 
Reports of Mr. Wheaton, or for any one volume of the work. They 
know that the requisites of the acts of Congress of 1790 or 1802, 
have not been complied with. They know that if they present them- 
selves before a court to assert a copy-right, they would fail in the 



11 

attempt, and that it would be judicially declared that no such copy- 
right exists. While they thus avoid the public and certain conse- 
quences of such a proceeding, they hope to profit by threatening the 
timid, and all those who are properly desirous to avoid ' difficulty.' 
Thus they gain by threats which they do not intend to carry into action, 
and they avoid they exposure of the weakness of the title they assert. 
" I aver that there does not exist a copy-right, legally secured, to any 
one volume of Mr. Wheaton's Reports, and I challenge an applica- 
tion to any court to maintain such a right. In addition to other ob- 
jections to the pretended claim to a copy-right resting on other facts 
and principles, I have in my possession the certificate of the secretary 
of state of the United States, that not a single volume of Mr. 
Wheaton's Reports has been deposited in the office of the secretary 
of state for the purpose of securing a copy-right. This omission is 
fatal; so it has been decided, as I am well assured, in New- York, and 
1 abstract a decision of Mr. Justice Washington, which is conclusive 
on the question. 

" ' To entitle the author of a book to a copy-right, he must not only 
deposite a printed copy of such book in the clerk's office, but he must 
also publish a copy of the record of the title within the period and for 
the length of time prescribed by the third section of the actof 1790^ 
and must also deposite a copy of the book in the secretary of state's 
office within six months after the publication of the book. He must 
perform all tiie requisites of the acts of 1790 and 1802, before he is 
entitled to the benefits of the act — the act will admit of no other con- 
struction.' Ewer et al. v. Coxe and Carey and Lea, 4 Washingtoii's 
Circuit Court Reports, 487. 3 Peters'' Condensed Reports, 373, notes. 

" A few words more on this matter. Mr. Halstead says ' he is 
threatened with a prosecution for selling the third volume of the Con- 
densed Reports, because the first volume of Wheaton is condensed 
in that volume.' Can there be a more completeproof of the absence 
of all right in those who threaten, than is exhibited by this fact? It 
is in New-York those threats are made ; no one in Philadelphia has 
threatened, and yet no copy-right for 1st Wheaton was ever asserted 
to belong to any one in New-York, and had one been regularly se- 
cured, it has expired. The work was entered for copy-right by the 
venerable Matthey Carey, Esquire, of our city, on the 20th of De- 
cember, 1816. The law gives a right, if its requisites are complied 
with, for fourteen years ; that period terminated on the 20th of De- 
cember, 1830, and the third Condensed Reports was not published 
until February, 1831. 

" I can add no more on this subject ; the work will go on. The 
fourth volume, to contain at least three volumes of Mr. Wheaton's 
Reports, will be put to the press soon after the month of April. I 



19 

mvite investigation of the legality of my publication. I challenge it I 
I stipulate to indemnify and save harmless all who publish or sell the 
work, and to take defence in any prosecution which may be instituted 
against them. I authorize and request you to furnish a copy of this let- 
ter, either printed or written, to Mr. Halstead, and to any other person. 

" I request him to hand a copy of it, as from me, and by my au- 
thority, to those who have threatened him, or may threaten him with 
prosecution. 

"Nothing, sir, can stay the progress or the success of the Condensed 
Reports, as you know the greater part of the first edition has been 
disposed of, and you have proposed to me to put another to the press. 

" Congress, yesterday, by a joint resolution, passed under circum- 
stances particularly gratifying to me, authorized the purchase of se- 
venty copies of the work. It is in constant use in the Supreme Court 
of the United States, by the bench and the bar. Every day new de- 
mands are made for it, and additional evidence received of its use- 
fulness. 

" It has placed the decisions of the Supreme Court within the power 
of very many who could not purchase the works of Mr. Dallas, Mr. 
Cranch, and Mr. Wheaton, in consequence of their great cost. 

" All the cases decided in the Supreme Court of the United States, 
reported by Mr. Dallas, Mr. Cranch, and Mr. Wheaton, will be con- 
tained in this work, with notes of all the circuit court decisions, and 
it may be purchased for one fifth of the original cost of those works. 

" It will diffuse a knowledge of the decisions of that high court and 
of those of the circuit courts, and will thus strengthen and secure the 
foundations of the federal judiciary. These will be my rewards for 
the labours of the publication, and their anticipation has been the 
chief inducement to undertake it. I am yours, very respectfully, 

" RICHARD PETERS." 

On filing the bill, an injunction was granted against the further 
sale or publication of the Condensed Reports. In September 
following the defendants put in their answers, and moved to dissolve 
the injunction. 

The defendants, by their answers, admitted the publication and sale 
of the volume of Condensed Reports, containing the same decisions 
as the first volume of Wheaton's reports, but denied that it was a 
violation of the complainants' rights. The circulars were also ad- 
mitted, and the defendant's intention to continue the publication of 
the rest of the decisions of the court contained in the subsequent 
volumes of Wheaton ; but it was denied that any thing contained 
in the Condensed Reports was the exclusive property of the com- 
plainants, or could be the subject of literary property. It was 
insisted that the matter of Wheaton's Reports was either publicly 



13 

recorded in the office of the clerk of the court, or had been reduced 
to writing by the judges and pronounced from the bench ; that such 
matter was not derived from the learning, talents, or industry of the 
author or publisher of those reports, and that if the justices furnished 
Mr. Wheaton with their opinions, it was done, not exclusively for 
his benefit, but to enable him to communicate them to the public. 
It was also insisted that much of the literary and professional labour 
bestowed on the Condensed Reports, and of the matter contained in 
them, were not derived from Wheaton's Reports. That references 
were made to parallel cases, and each case was preceded by a 
copious syllabus. That the arguments of counsel were omitted, as 
Mr. Peters regarded them as being susceptible of being made the 
literary property of a reporter. 

The answers then objected that it was not alleged in the bill, that 
the record at the clerk's office of the first volume had been published, 
nor a copy delivered to the secretary of state, agreeably to the acts 
of Congress, and that it was not alleged that any of the subsequent 
volumes had been so delivered. And it was insisted, that no such 
delivery ever had been made, and that if the same had been omitted, 
or could not be proved, the complainants were not entitled to the 
benefit of the acts of Congress. 

The answers admitted that the edition of the volume of Condensed 
Reports was fifteen hundred copies, and that upwards of nine 
hundred had been sold. 

To the answers there was a general replication. 

The motion to dissolve the injunction was denied, the court being 
divided. The presiding judge was opposed to its dissolution, and 
the district judge in favour of dissolving it, and it was of course 
continued until final hearing. 

The cause was heard in January, 1833, by the district judge, 
his honour Mr. Justice Baldwin, the presiding judge, being detained 
from the bench by illness. The hearing under these circum- 
stances was strongly opposed by the complainant's counsel and 
the propriety of a delay, in consideration of the known division 
of opinion between the judges, was pressingly urged upon his 
honour the district judge. The irreparable injury to the complainants, 
from a dissolution of the injunction, was also urged. This motion 
for delay was opposed by the counsel for the defendants, and the 
judge decided that the cause should then be heard. 

The complainants proved by exemplifications of the records, 

that the title-page of each volume of Wheaton's Reports was duly 

entered of record in the clerk's office as alleged in the bill. The 

volumes themselves were also offered in evidence, from which it 

2 



14 

appeared that the record was imprinted on the title-leaf of each 
volume. Files of newspapers, as far back as 1818, were produced, to 
prove the publication of the records in the newspapers. From 
these it appeared that all the records had been duly published, except 
of the first, second and ninth volumes. No newspapers were pro- 
duced, showing the publication as to those three volumes. But Mr. 
Carey, who attended to his father's business at the time he published 
the first volume, testified that the securing of copy-rights was his 
particular charge, and that the house was at that time in the constant 
habit of advertising copy-rights, but not of keeping copies of the ad- 
vertisements ; and that he had no doubt, from the course of business, 
that it was advertised, although he had no recollection of it. The 
publication of the renewal of the copy-right of the first volume was 
also proved by the production of the newspaper. 

To prove the delivery of a copy of each volume to the secretary 
of state, a deposition of Daniel Brent was read in evidence, in which 
he deposed that he had been chief clerk in the department of state, 
since the fourth of November, 1817, and that its affairs were inti- 
mately and particularly known to him. That eighty copies of each 
volume of Wheaton's Reports were, within six months after publi- 
cation, delivered, under the acts of Congress giving the reporter a 
salary, to the department of state. That there had always been, 
according to deponent's recollection, one or more complete sets of 
said reports, from the time of their publication, in the said depart- 
ment of state, but that he was unable to recollect or state more 
particularly, when the same were first placed there, or for what 
purpose. That there did not appear any evidence in the depart- 
ment, to his knowledge, that the successive volumes of said reports, 
or copies of them, were deposited in the department by the maker 
or publisher, as they were printed, agreeably to the provisions of the 
laws of Congress for securing copy-rights, though the memorandum 
of similar deposites was kept in the patent office, a branch of the 
department of state, and not at the department itself, for several 
of the first years referred to ; and that the deponent was under a 
thorough impression and belief that the memorandum of such de- 
posites of books, and the giving receipts for the same, were often 
neglected to be made and given during the whole period referred 
to. That said sets of Wheaton's Reports are placed in, and consti- 
tute a part of the library of said department ; and that the books 
of the library were often lent out to persons, including members of 
the bar, for reference ; and that the books placed in the department 
under the copy-right laws were also placed in, and constituted a 
part of the same library, and were subject to be lent out in the same 
manner as the other books of the library. 



16 

Mr. Carey also testified as to the delivery of the first volume, 
published by his father, that he did not doubt that a copy was 
deposited in the state department, although his house had no 
evidence of it. They were always accustomed to do it, but never 
deemed it necessary to have a certificate of the deposit, because 
they had never seen one. They as well as the trade had supposed 
a record of the deposit was kept in the department. The earhest 
certificate they had was dated in 1820, and they had but two prior 
to 1825, Until Mr. Clay came into the department there was no 
order in sending certificates, or attention given to it. Ever since 
then, witness' house had been obliged to write four, five and six 
times before they could get the certificate. Witness' house had been 
more largely concerned in publishing than any other in the 
United States. 

The complainants also gave in evidence the acts of Congress 
allowing Mr. Wheaton his salary, as reporter. The first was the act 
of March 3d, 1817. It provides, " That the reporter who shall from 
time to time be appointed by the Supreme Court of the United 
States to report its decisions shall be entitled to receive from the 
treasury of the United States as an annual compensation for his 
services the sum of one thousand dollars : Provided nevertheless, 
the said compensation shall not be paid unless the said reporter shall 
print and publish, or cause to be printed or published, the decisions 
of said court made during the time he shall act as such reporter, within 
six months after such decision shall be made, and shall deliver eighty 
copies of the decisions so printed and published to the secretary of 
state, without any expense to the United States." The act pro- 
vides that these eighty copies should be distributed among certain 
officers, whom it enumerated, and should be delivered to their 
successors in office. Among the officers enumerated was the 
secretary of state. This act was continued in force by subse- 
quent acts of the 15th May, 1820, 3d March, 1823, and 22d 
February, 1827, and there were two additional clauses in the last 
act, as follows : " Provided nevertheless that the said com- 
pensation shall not be paid, unless said reporter shall print 
and publish the decisions of said court, within six months after such 
decisions shall be made ;" " and provided also, that said decisions 
shall be sold to the public at large at a price not exceeding five 
dollars a volume." 

The various assignments by which Mr, Donaldson acquired his 
partial interest in the copy-right of each volume were also proved. 

The complainants also gave in evidence a letter from the com- 
plainant, Donaldson, dated September 25th, 1828, to the defendant, 
Peters, inquiring whether it was true that he intended to publish the 



16 

eases contained in Wheaton's Reports, as had been reported. The 
letter then proceeds : " For myself, I readily anticipate your answer ; 
that you will not issue such a work, the effect of which would be to 
me literally ruinous on a large amount of property I have vested in 
the work, which I have been endeavouring to accumulate from my 
labour and care of twelve years ; likewise the injury that would be 
done to my absent friend, Henry Wheaton, Esquire, by such a publi- 
cation, and the result of which would be to deprive him and his 
family of the pecuniary reward due to his professional labours of twelve 
years. However, should you see fit to bring out such a work, we 
must, under such circumstances, look to the laws of our country for 
redress of so great an injury as would thereby be done us. But ere 
you receive this, I have little doubt that you have determined to 
pursue a more honourable course,by having abandoned said project." 
In reply to this the defendant, Peters, wrote Mr. Donaldson as 
follows :— " Philadelphia, September 26th, 1828. Mr. Robert Do- 
naldson, New-York : Sir — In reply to your letter of the 25th, I have 
forwarded you a copy of my correspondence with Judge Cranch, to 
which I refer for my views and determinations upon the matters which 
are the subject of your communication. I am your obedient servant, 
Richard Peters." 

The correspondence between Judge Cranch and Mr. Peters, refer- 
red to in the above letter, and sent to Mr. Donaldson, was also 
proved, and was as follows : — " Washington, D. C, July 18, 1828. 
R. Peters, jr. Esq. : Dear Sir — I have been informed that you propose 
to publish a new edition of my reports. It is with great reluctance 
that I deem it my duty to others to inform you that I have not yet been 
reimbursed the actual expense of publishing my three last volumes 
by one thousand dollars, and that I must insist upon all my legal 
rights. W. Cranch." 

" Philadelphia, August 14, 1828. Hon. W. Cranch : Dear Sir— I 
have been absent from this city since the 18th of July, and this 
moment have your letter of that date. 

" I do assure you in the kindest spirit, I shall not object to your in- 
sisting on your legal rights in reference to your reports, and should 1 
invade them I must submit to the consequences. I do not, nor have 
I ever desired to propose to publish a new edition of your reports. 
My plan is, to publish in a condensed form the decisions of the Su- 
preme Court of the United States, and as the opinions of the court 
cannot be the subject of copy-right, neither can the facts of the cases 
be the property of any one, my work will not be obnoxious to the 
laws protecting literary property. These are opinions, which have 
had high professional sanction, and by which I am willing to abide. 
I have issued a prospectus of my work, a copy of which I take the 



17 

liberty to enclose. From every part of the United States, I have ce- 
ceived expressions of the highest approbation of my plan ; and the 
beneficial influence in our country of placing the decisions of the 
court within the power of many who cannot purchase the reports at 
their present price, is admitted by all. I have not adopted the opinion 
that my work will injure the sale of yours or Mr. Wheaton's Reports: 
on the contrary, 1 think they will be more in demand, as their more 
valuable contents shall by my means be made more known. All 
booksellers say ' digests' promote the sale of original works. My 
work will be a ' digest' of the facts of the cases and the opinions of 
the court, no more. I beg you will not consider this as intended to 
extract from you any observation on my plan. I assure you I am 
desirous to have our relations upon this matter on the ground the rest 
in connexion with your letter of the 18th July." 

The third volume of Condensed Reports, as well as the first of 
Wheaton being made evidence, it appeared that Mr. Peters had in 
his volume made an entire and literal copy of the whole of Mr. 
Wheaton's volume, with the exception of the arguments of counsel. 
These arguments at length he had omitted, and had only taken the 
points and authorities. But the abstract or syllabus at the head of 
each case, the statement of the facts of the case, the marginal notes, 
the opinions of the judges, oral as well as written, the index at the 
end of the volume, and the order and arrangement of the whole, were 
exactly copied, without abbreviation or alteration. 

Upon this evidence the District Judge pronounced a decree dis- 
missing the bill and dissolving the injunction. The decree was pro- 
nounced on the 9th of January, 1833. An appeal to this court was 
entered on the spot, by the complainants, the record sent up, and the 
cause forthwith placed on the calendar for argument at the present 
term. 

Between the decree and the commencement of the term, however 
Mr. Peters had published the three last volumes of his Condensed 
Reports, containing the eleven remaining volumes of Wheaton's Re- 
ports. These on the argument were referred to, and it appeared 
that he had made the same use of the eleven last volumes of Wheaton's 
Reports as of the first. 

Mr. Webster, and Mr. Paine, for the complainants. 

1. An author was entitled, at common law, to a perpetual property 
in the copy of his works, and in the profits of their publication, and 
to recover damages for its injury by an action on the case, and to 
tlie protection of a court of equity. 



18 

The best definition of " copy," or as it is now generally termed, 
" copy-right," may be found in the following words of Lord Mansfield, 
in the case of Millar v. Taylor, (4 Burr. 2396.) " I use the word 
copy, in the technical sense in which that name or term has been 
used for ages, to signify an incorporeal right to the sole printing 
and publishing of somewhat intellectual, communicated by letters." 

The laws of all countries recognise an author's property in his 
copy. In Germany, the property is free from regulation and per- 
petual. And in no country are books so cheap and common, learn- 
ed men so numerous, information so universally diffused, and science 
and literature so triumphant, as in Germany. There the public are 
blessed in blessing and rewarding the author. 

In Sweden and Norway, also, the property is perpetual. In 
France, an author's right in his works is secured to him during his 
life, and for twenty years after his death to his representatives. In 
that country, where they call things by their right names, literary 
piracy is denominated a theft, un vol, is provided against in their 
criminal code, and punished like other similar crimes, by a disgrace- 
ful punishment. ( Merlhi's Repertoire de Jurisprudence, vol. 3, title 
" Contrefacon.'''') And there, learning and authorship are so much 
encouraged, that Dr. Johnson observed that they have a book on 
every subject. 

In England, beyond all question, (for it has been solemnly settled, 
after a controversy, which for duration and obstinacy has no parallel 
in the history of English jurisprudence,) an author had, at common 
law, the sole and exclusive property in his copy. This property was 
placed by its defenders, ( and they finally prevailed,) upon the foun- 
dation of natural right recognised by the laws, ordinances, usages 
and judicial decisions of the kingdom, from the first introduction 
of the art of printing. 

The opponents of literary property insisted that an author had 
no natural right to his copy ; and, resorting to those laws which are 
supposed to have governed property before the social compact, they 
maintained that because the copy was incapable of possession, it 
was impossible to have property in it. Mr. J. Yates, the great op- 
ponent of literary property, and who has probably said all that ever 
was or can be said against it, urges that it is impossible to appro- 
priate ideas more than the light or air ; (4 Burr. 2357. 2365. ) 
forgetting that books are not made up of ideas alone, but are, and 
necessarily must be, clothed in a language, and embodied in a form 
which give them an individuality and identity that make them more 
distinguishable than any other personal property can be. A watch, 
a table, a guinea, it might be difficult to identify ; but a book never. 

Indeed it is impossible to read Mr. Justice Yates' argument 



19 

without distrusting the conclusion which is arrived at from premise 
such as those which he adopts. He cavils at the impossibility of de- 
termining when the property attaches. He insists that other men may 
have the same ideas as an author, and will not understand that 
the question is not as to property in ideas but in books, and that 
although men may have the same ideas, they may never choose to 
express them, and if they do, it is impossible to express them as any 
other person has done. In deciding as to this point, he throws me- 
thod, arrangement, style and language entirely out of view. (4 Burr. 
2358—2361.) 

Mr. J. Yates is incapable of perceiving that authors have any 
moral or equitable right because their publications are the fruit of 
their labour and abilities. He says, " the argument has indeed a cap- 
tivating sound ; it strikes the passions with a winning address, but it 
will be found as fallacious as the rest." ( lb. 2359.) 

One of the strongest points in Mr. J. Yates's opinion is, that it is 
impossible for an author to have a property in his works after he has 
published and sold them. (lb. 2363.) He insists that by so doing, 
he necessarily parts with all his property, and that the purchaser has 
a right to make what use he pleases of the book, and to republish it. 
As well might he say that a man who leases lands, parts with all his 
property in them, and can never claim the reversion ; and that the 
tenant has a right to sell or waste the inheritance. As well might 
he say that one who loans a chattel can never reclaim it. The 
fallacy is, in overlooking the contract between the parties; in suppos- 
ing that men cannot or do not agree to allow others a partial and 
qualified use of their property, and that the right to use cannot ex- 
tend beyond the agreement. If an author sells his books with the un- 
derstanding (and custom would make such an understanding, whether 
expressed or not) that he retains the right of publication, where is 
the difficulty in acknowledging and protecting the right ? 

Mr. J. Blackstone has probably placed literary property on its 
true ground. " When a man," says the learned commentator, " by 
the exertions of his rational powers has produced an original work, 
he seems to have clearly a right to dispose of that identical work as 
he pleases ; and any attempt to vary the disposition he has made of 
it, appears to be an invasion of the right. Now the identity," says he, 
"of a literary composition, consists entirely in the sen/2me«< and the 
language. The same conceptions, clothed in the same words, 
must necessarily be the same composition ; and whatever method 
be taken of exhibiting that composition to the ear or the eye of 
another, by recital, by writing, or by printing in any number of copies, 
or at any period of time, it is always the identical work of the au- 



20 

thor which is so exhibited ; and no other man, it hath been thought^ 
can have a right to exhibit it, especially for profit, without the au- 
thor's consent. (2 Bh Com. 406.) 

Mr. Christian has also observed — " Nothing is more erroneous than 
the practice of referring the origin of moral rights, and the system of 
natural equity, to that savage state which is supposed to have pre- 
ceded civilized establishments, in which literary composition, and of 
consequence the right to it, could have no existence. But the true 
mode of ascertaining a moral right, is to inquire whether it is such as 
the reason, the cultivated reason, of mankind must necessarily assent 
to. No proposition seems more conformable to that criterion, than 
that every one should enjoy the reward of his labour ; the harvest 
where he has sown, or the fruit of the tree which he has planted. 
Whether literary property is stii generis, or under whatever denomi- 
nation of rights it may be classed, it seems founded upon the same 
principle of general utility to society, which is the basis of all other 
moral rights and obligations. Thus considered, an author's copy- 
right ought to be esteemed an invaluable right, established in sound 
reason and abstract morality." {lb. 407. n.) 

I would also refer the court to the able opinions of Mr. J. Willes, 
Aston and Lord Mansfield, in Millar v. Taylor, (4 Burr. 2310. 2335. 
2395.) They agreed not only that an author had a property at com- 
mon law, but that it was perpetual, notwithstanding the statute of 
Anne. 

Not long after that decision, however, the question as to the per- 
petuity of an author's property was brought before the House of 
Lords, and it was there decided that it was not perpetual, its duration 
being limited by the statute of Anne. Yet, even upon this point, the 
twelve judges were equally divided, (if we include Lord Mansfield, 
who did not vote, as he was a peer,) and there were eleven out of the 
twelve who maintained, that an author had a property at common 
law in his copy. (See Donaldson v. Beckett, 4 Burr. 2408. 2 Br. 
P. C. 129.) 

It may be observed of these two cases, that in Millar v. Taylor, 
(4 Burr. 2306.) the jury found as a fact in the case, that " it was 
usual before the reign of Anne, to purchase from authors the perpe- 
tual copy-right of their books, and to assign the same from hand to 
hand for valuable considerations, and to make the same the subject 
of family settlements for the .provision of wives and children." In 
Donaldson v. Beckett there was no such finding of a jury. It was a 
bill in equity, and appears to have been heard on bill and answer. 
The probability is that the confidence inspired by the decision in the 
case of Millar v, Taylor led the counsel for the author's rights to 



21 

neglect both the proof and argument, for it appears to have been 
hardly argued by them at all, and to have been very ably argued 
against them. (2 Br. P. C. 129.) It may be as well also, here to 
observe of this case, that the only question decided adversely to an 
author's riglits, was as to the perpetuity. The answer sets up (/6. 
p. 130 — 1) no ground of defence, except the expiration of the term 
of twenty-eight years allowed by the statute of Anne, and this luas 
the only question decided, as was held in Beckford v. Hood. (7 T. R. 
616.) There was no question, as to the provisions of the statute 
being complied with. 

We will now, having seen how the great question of common 
law property was finally disposed of, recur to its origin and history 
in England. The introduction of the art of printing into the kingdom, 
occurred in 1468 or 1471. It was claimed to have been in- 
troduced in 1468, secretly, and at great expense, by the king, from 
Harlaem; and out of this probably sprung the king's prerogative, 
<4 Burr. 2415.) 

While the art was in its earliest infancy, and when there were pro^ 
bably few or no rival presses, the question as to literary property is 
not known to have arisen. But in 1556, we have evidence of its 
acknowledged existence, in the charter granted to the stationers' 
company, (4 Burr. 2312. Maugham, on literanj prop. 12.) who were 
incorporated with the exclusive privilege of practising the art. Of 
course they became the sole purchasers and possessors of copy-rights, 
and they kept a registry to show to whom the copy in any book be- 
longed. Carte, the historian, says that " he was surprised on care- 
fully examining one of the registers in Queen Elizabeth's time, from 
1576 to 1595, to find, even in the infancy of English printing, above 
2000 copies of books, entered as the property/ of particular persons, 
either in whole or in shares, and mentioned from time to time to 
descend, be sold, and be conveyed to others," {Maugham, 17.) It 
appears from Maugham, as well as Millar v. Taylor, that there were 
entries even as early as 1558, of the ownership and transfer of the 
copy in books. 

The decrees of the Star Chamber, show, that that court admitted 
and protected the rights of authors, as early as 1556. {Millar v. Taylor, 
Maugham, 12, 13.) 

Ordinances of parliament, as early as 1641, recognise and protect 
the owner''s property in his copy. These ordinances were several 
limes repeated. {lb. Maugham, 13, 14.) In 1662 and 1679, acts of 
parliament were passed, prohibiting any persons from printing with? 
,<5ut the consent of the owners of the copy. (/6. 15, 16.) 

Iij the reign of Charles II., there were several cases in the 
3 



22 

courts in which the- ownership of the copy by authors is treated as 
the settled common law ; and in one case, the case of Crokes' Re- 
ports, the right of the author was sustained, even against the claim 
of the king's prerogative to pubhsh all law books. (/6. 19. 4 Burr. 
2316.) Chief Justice Hale presided. 

In the reign of Anne, when the perpetual ownership of literary 
property was thus firmly established, the booksellers, annoyed by the 
piracy of unprincipled and irresponsible adventurers, applied to par- 
liament for protection. A bill was accordingly brought in for the 
purpose, entitled, " An act to secure the property of authors." In 
committee its title was changed to that of " An act to vest authors 
with their copies, for the times therein mentioned." {Maugham,20 — 
27.) And the act declared, that authors should have an exclusive 
right for twenty-one years, and no longer. In this shape it was 
passed. 

Notwithstanding the strong and explicit terms of the statute of 
Anne, both as to vesting the author with his right, and limiting its 
duration, (terms not to be found in our act,) the courts, by an uninter- 
rupted series of decisions from the passing of the statute down to the 
case of Donaldson v. Becltet, maintained that an author still had his 
original perpetual common law right and property ; and we have seen, 
that had Lord Mansfield voted in that case, the twelve Judges would 
have been equally divided. 

One cannot forbear inquiring, why the learned chancellors and 
judges, who sat on the English bench during that period, should 
have so long contended against the inflexible and unequivocal lan- 
guage of the act of Anne. An answer can only be found in the sup- 
position, that they resisted what they deemed an act of injustice, and 
would not permit a subject to be deprived of his property if they 
could find any means to prevent it. 

Lord Mansfield, at the conclusion of his opinion, in Millar v. Tay- 
lor, (4 Surr. 2407.) says — 

" The subject at large is exhausted, and therefore I have not gone 
into it. I have had frequent opportunities to consider of it. I have 
travelled in it for many years. I was counsel in most of the eases 
which have been cited from chancery. I have copies of all from the 
register-books. The first case of Milton's Paradise Lost was upon 
my motion. I argued the second, which was vehemently argued by 
one on each side. I argued the case of Millar against Kincaid, in 
the House of Lords. Many of the precedents were tried by my ad- 
vice. The accurate and elaborate investigation of the matter in this 
cause, and in the former case of Tonson v. Collins, has confirmed 
me in what I always inclined to think, " that the Court of Chancery 



23 

did right in giving relief upon the foundation of a legal property in 
authors ; independent of the entry, the term for years, and all the 
other provisions annexed to the'security given by the act." 

It would seem to be needless to discuss those general principles on 
which an author's property is based. They are the same as give 
man a title to any species of property. An author acquires a pro- 
perty in his works, because they are the product of his own labour, 
bestowed with the declared and known intention of appropriating 
such product exclusively to himself. They are his, because the 
natural law makes it necessary for man to labour for his subsistence, 
and therefore secures to him what he thus acquires in obedience to 
its commands. They are his, because the same law forbids a depen- 
dance upon casual acquisitions, but enjoins the duty of providence, 
and of course protects those stores which by labour he seeks to lay 
by for the future. They are his, because the object of all labour is 
acquisition ; because man must depend upon his labour alone for 
subsistence, and the products of his labour, are therefore, absolutely 
necessary to his being. They are his, because unless he acquires 
the right to publish them, he acquires nothing, but his labour is wholly 
unproductive. They are his, because civil society grows out of the 
natural wants of men, and its object is by every possible means, to 
enforce, aid, and extend those natural laws which the vi^ants of man 
have ordained. They are his, because they may by law be secured 
to hii«n, and be protected without difficulty, and because he may 
possess and enjoy them, without mischief to society, and without any 
possible injury to another. But above all, they are his, because the 
labour which produces them is meritorious, and while it secures a 
subsistence for himself, promotes directly and inconceivably the hap- 
piness and good of mankind. 

The obstacles which have been supposed to exist to a legal pro- 
tection of literary property, are imaginary and chimerical. They 
proceed from that sort of skeptical blindness, which is unable to 
perceive how property can exist without a sensible corporeal pos- 
session. It is singular that any such difficulty should be felt as to 
literary property, when our system of laws abounds in instances of 
the most arbitrary rules for the acquisition or transmission of pro- 
perty, where there is neither any possession nor any natural right of 
possession, and for the protection and reclamation of property, 
where the possession has been parted with. Instances of this kind 
are given in the following words of Blackstone : — 

" There is no foundation in nature or in natural law, why a set of 
words upon parchment should convey the dominion of land ; why 
the son should have a right to exclude his fellow creatures from a 
determinate spot of ground, because his father had done so before 



him; or why the occupier of a particular field, oj* of a jewel, wheM 
lying on his death bed, and no longer able to maintain possession, 
should be entitled to tell the rest of the world which of them should 
enjoy it after him." (2 Bl. Com. I.) 

Literary property possesses every feature, which Puffendorf con- 
siders necessary, to give any subject the character of property. It 
has all the essential qualities of property as defined by him. {Puf- 
fendorf, book 4; ch, 4, 5.) 

I would refer the court to an excellent review of the common law 
property of an author, and of the legislation upon the subject in 
England and the United States, in the American Jurist — (Vol. 10, p* 
61—80, No. for July, 1833.) 

II. The common law property of an author is not taken away by 
the constitution of the United States. The states have not surren- 
dered to the Union their whole power over copy-rights, but retain a 
power concurrent with the power of Congress, so far that an author 
may enjoy his common law property, and be entitled to common law 
remedies, independently of the acts of Congress. It is one of those 
concurrent powers, where the power of the state ceases, only when it 
actually conflicts with the exercise of the powers of Congress. 

rhe constitution of the United States provides, that " The Con- 
gress shall have power to promote the progress of science and useful 
arts, by securing, for limited times, to authors and inventors, the 
exclusive right to their respective writings and discoveries." 

In this constitutional clause there are two subjects, distinct enough 
in themselves, and only united by the form of expression. This com- 
prehensiveness of expression, we know belongs to the constitution, and 
that the aim of its framers was brevity. The expression is not so impor- 
tant, for in that instrument we are to look for substance and intention. 

Although united in this clause, and for the same purpose of being 
secured by CongresSj the subjects of patented inventions, and copy- 
rights have little analogy. They are so widely different, that the one 
is property, the other a legalized monopoly. The one may be held 
and enjoyed without injury to others, the other cannot without great 
prejudice. The one is a natural right, the other in some measure 
against natural right. 

But because they both come from invention or mental labour, and 
in addition, because they are so joined in the constitution, we have 
become accustomed to regard them as in all respects alike, and 
equally dependent on the legislative favour for existence and protec- 
tion. And it has been ingeniously attempted in this court in a great 
case, {Gibbons v. Ogde?i,) to sustain patent-rights by placing ihem 



25 

ih ail respects by the side of copy-rights^ and as having the same soft 
of existence. In that case, Oakley arguendo cites the cOpy-right case 
of Millar V. Taylor in support of property in inventions. 

But we have seen that at common law an author has a well estab= 
iished property in his writings. It is settled to be property, which 
means that it is his own like all other property. Whereas, we know 
equally well that a man has no property in his inventions except what 
he derives from his patent. Patents owe their origin to the statute of 
monopolies. They are merely a favoured monopoly. They are a 
grant from the state, partly from justice and partly from policy, but 
as no one has any right without the grant, they are granted as the 
State thinks best. Without the exception in favour of inventions in 
the statute of monopolies they would be illegal. It was because they 
were not property that the exception was made. If they had been, 
it would have been unnecessary. It would be superfluous to show 
why inventions are not a subject of property ; it is sufficient that it 
was never pretended that they were, while it has always been claimed, 
from time immemorial, that books were, and has been often judicially 
decided. 

The power, then, given, is over things so entirely different, that the 
Word secure may, and probably does, transfer to the legislation of 
Congress, the whole subject matter of the one, while it is wholly 
inadequate to make such transfer of the other. In other words, the 
power given over patents is perhaps plenary and exclusive ; over 
copy-rights it is but a portion of the power of the states over the sub- 
ject-matter, and therefore limited and concurrent. 

To take first the power over patents, given by this clause. As an 
inventor has no property without statutory security. Congress, when 
authorized to secure his rights, is authorized to confer them on him, 
to give him something he had not before. As they have the power 
of creating the rightj it would seem they must have the power so to 
create it, that is to annex to it such conditions and incidents, as they 
see fit. Thus having the creating power, which would seem to draw 
after it every other power, as incidental to this emphatically main 
power, there is reason to regard the power conferred as a plenary 
power, and exclusive of other legislative power. The states, before 
the constitution, could secure the right, and no more, except annexing 
terms and conditions to its enjoyment. No one, however, before 
they secured it, had any right to it. Their securing gave it. When, 
therefore, they gave an entire power possessed by themselves to Con- 
gress, there is reason to suppose they intended to give the whole 
when they made no reservation. Congress having the power to 
create, it would be strange to permit a state to legislate over and 
regulate and control the creations of Congress. Their own offspring 



26 

should be under their own care and authority, to the exclusion of all 
others. In a word, when the states gave the great main power, it 
would seem that all incidental powers went with it. 

But how is it with copy-rights ? The states transfer to Congress a 
mere incidental power over them, and do not give the main power. 
Congress are not authorized to create them. The states did not pos- 
sess the power of creating them. Nature and usage had already 
ranked them among the kinds of property. They were property 
existing here without the aid of legislation. The states granted to 
Congress a part of the power they possessed over them, viz. the 
power to secure them by legislation. But they granted them nothing 
further. The great power of the states, as they could not create, 
was to regulate them. But this they do not give to Congress. Nor 
the power of impairing or taking away, which the states undoubtedly 
possessed. They merely give Congress the power to secure. Is 
this a plenary power over the whole subject ? Does the transfer or 
participation of this incidental power carry all other powers with it ? 
There are many reasons besides, why the states should have given 
Congress more power over patents, than merely to secure them. 
But there are no such reasons why they should have given any other 
power over copy-rights. 

In relation to patents, other powers are necessary to accompany 
the power of creating them. It would be most mischievous to the 
public to allow an exclusive right to exist to inventions without re- 
straint and control. And they can be host restrained and controlled 
by the law creating and forming them. And' this was so by the 
English statute. 

In the first place, the power to limit their duration absolutely, (I 
do not mean the duration of the security,) is a necessary one. For, 
it is obvious at a glance, that a perpetual right to an invention, and 
to exclude every one else from that ground, would be most mischiev- 
ous and ruinous to the community. 

New inventions are continually covering almost the same ground 
as those preceding them. There must consequently be a continual 
conflict. The new invention is assailed as an infringement on the 
old one. And legal contests would be unceasing. 

It would conflict with the rights of he public and other inventors, 
to allow one to occupy a ground for ever, which but for him, others 
would soon have occupied. Minds are all moving in a similar direc- 
tion, and a discovery by one is what would soon have been made by 
others. It would therefore be unjust, to appropriate to one, what 
without him might be acquired by all. An invention is the work of 
a single thought. It is but giving form and body to a single idea. 
Consequently no one doubts that thousands might invent the same 
thing. 



27 

How different are books. They may be copied, or pirated, but no 
one ever supposed that others would or could accidentally produce 
the same work as a previous author. It is impossible even to produce 
the same paragraph. The plagiarism is instantly detected, nor 
would the pretence for a moment be listened to, that the second 
writer had casually written like the first. A paragraph even, to say 
nothing of the whole book, is so full of ideas, and they are so clothed 
in language, and both they and the words have such an arrangement, 
that chance or invention could not produce two alike. 

Again — Patents obstruct the progress of invention, by suggesting 
constant doubts and difficulties, whether the same thing had not been 
before invented. In the same way they interrupt and check the 
free use of things, there being a doubt v/hether the thing is patented 
or not. And it is easy to set up false claims to old inventions. 

In all these respects, property in books is wholly unlike inventions, 
and has no need of the hmitation or regulation which inventions 
require. A perpetual, unregulated property in them, is harmless 
and innocent, except that the author is always reaping his reward, 
which the public have to pay. But is this an objection 1 

A right to print a book can never stand in the way of another. He 
can still express his own ideas in his own language, without the slight- 
est danger of trespassing on the author's rights. There can be no 
conflict. There is no obstruction to the public or others, and no 
mischief No false claim is in danger of being set up. It would be 
impossible to appropriate an old book. And the right to a book can 
be as easily ascertained, perhaps easier, than to any other kind of 
property. So that there is no danger of invading secret and unknown 
rights as in case of patents. 

There is another reason why it is not necessary to throw the right 
to books open, as it is in case of inventions. A single edition will 
supply the country as easily and cheaper than several. Whereas, sup- 
pose every machine, fabrication or compound, must perpetually ema- 
nate from the manufactory of the inventor. The public would be 
served very little to their mind. This would deserve the name of a 
monopoly. It was for these reasons of public inconvenience, that a 
property in inventions has always been stigmatized as a monopoly. 
But a perpetual copy-right, before the statute of Anne,was not deemed 
a monopoly. The reason was, it was not felt as such. It gave the 
public no inconvenience. There was no public policy against it. 
The just right of the author interfered with no other's rights. None 
but pirates could profit by his loss of it. To the public, it was the 
same whether he or they had the profit of the printing. 

For these reasons, although copy-right and inventions are embraced 
in this single clause of the constitution, they appear to me as different 



28 

as real and personal estate, or kinds of property the most unlike to 
each other, and to require as different legislation. I therefore believe 
that their being united in this clause of the constitution was merely 
for brevity and comprehensiveness, and that the expression, although 
its import is very different when we regard the two subjects of it, yet 
fully expresses the intention of the legislature as to both, if we take 
the words in their usual signification. It seems to me that it is not 
unlikely that the framers of the constitution designed to give to Con- 
gress the complete and exclusive power over patents ; but that it by 
no means follows if they did, that they also intended to give the same 
power over copy-right. 

Yet even as regards patents, there is one strong argument why it 
was not the public good at all, but only the benefit of the author or 
inventor which was considered in inserting this clause in the consti- 
tution. The constitution does not prevent the states from protecting 
inventions imported from abroad. — This is admitted. (3 Mr. J, 
Story^s Com. 50.) If this was a part of the mischief intended to be 
cured, they have omitted a very important particular of it. 

Having endeavoured, by separating copy-right from inventions, to 
place it alone, and so as to be considered singly and on its own 
merits, I now proceed to establish the several grounds assumed in 
this point 

And, first of all, it is important to examine the true rules of con-- 
struction which are applicable to this clause. 

This is the tirst instance in which this court has been called upon 
to pronounce, whether the power given in this clause is an exclusive 
or a concurrent power, or as to the extent of the power conferred by 
it on Congress. Consequently the rules established as to the con- 
struction of that instrument, have been all in relation to other 
powers, and powers of a very different character. 

All the other powers in the constitution, conferred on Congress or 
yielded by the states, are national or political, and for national and 
political purposes. This is the only instance of a power being con- 
ferred, unless incidentally, over private property. This is a power 
over private property, not incidental to a national power, but with 
an immediate, primary and single reference to the property. The 
rule of construction as to the grant of the political and national 
powers m.ay not be suited to this. It has been held, as to them, that 
a rule of strict construction was not to be adopted. 

But the question here is as to private right. And the question is, 
whether the constitution takes away a private right, and property at 
common law. And why should we not apply the same rule of con- 
struction to such a constitutional provision, as we do to a statute in 



29 

derogation of common law right ? The rule is, that such statutes 
are to be construed strictly, because they abridge the right. The 
reason of the rule extends to the constitution, whenever it is in dero- 
gation of commen right. (10 Mod. 282. 4 Bac. Ab. 550.) 

Other common law rules in relation to statutes affecting private 
right or common law rights, would seem to be peculiarly applicable 
to this clause of the constitution, although they may not be generally 
referred to as guides in construing the constitution. These are as 
follows : 

" In construing statutes, three points are to be regarded — 1st, the 
old law; 2d, the mischief; and 3d, the remedy." (1 Bl. Com. ST. 
Bac. Ab. ^'■Statute,''' I. pi. 31, 32.) "And the construction should 
be such, if possible, as to suppress the mischief, and advance the 
remedy." (lb.) 

" An affirmative statute does not abrogate the common law." 
"If a thing is at common law, a statute cannot restrain it, unless it 
be in negative words.''— {Plowd. 113. 206. 1 Inst. 111. 11.5. I Bl 
Com. 89. 10 Mod. 118. Bac. Ab. ''Statute," G, 19. Fin. Ab. 
" Statute,''' E. 6.) 

" Where a statute gives a remedy, where there was one by the 
common law, and does not imply a negative of the common law 
remedy, there will be two concurrent remedies. In this case, the 
statute remedy is accumulative by the, supposition that the statute 
does not repeal the common law." — (2 Burr. R. 803 — 5. Com. Dig. 
''Action on Statute,'" C. 2 Inst. 200. Scidmore v. Smith, 13. /. R. 
322. Golden v. Eldred, 15. /. R. 220.) 

The following are among the rules of construction, which have 
been applied to the constitution by this court, or by Mr. J. Story in 
his Commentaries. 

" In the first place, then, every word employed in the constitiition, 
is to be expounded in its plain, obvious and common sense, unless 
the context furnishes some ground to control, qualify or enlarge it." 
(1 Com. 436.) 

" Where words are plain and clear, and the sense distinct and 
perfect arising on them, there is generally no necessity to have re- 
course to other means of interpretation." (76. 384.) 

" Where the words of the constitution are plain, clear, and deter- 
minate, they require no interpretation, and it should therefore be ad- 
mitted, if at all, with great caution, and only from necessity, either 
to escape some absurd consequence, or to guard against some fatal 
evil." (76. 387.) 

" The words are not to be stretched beyond their fair sense ; but 
within that range, the rule of interpretation must be taken, which 
best follows out the apparent intention." (76. 397.) 
4 



30 

'* Whenever it is a question of power, it should be approached 
with infinite caution, and affirmed only upon the most persuasive 
reasons." (lb. 387.) 

" It has been observed, with great correctness, that although the 
spirit of an instrument, especially of a constitution, is to be respected 
not less than its letter, yet the spirit is to be collected chiefly from the 
letter." {lb. 411.) 

" The government of the United States can claim no powers, whicfi 
are not granted to it by the constitution ; and the powers actually 
granted, must be such as are expressly given, or given by necessary 
implication:'' {Martin v. Hunter's lessee, 1 W/i. R. 326.) 

" On the other hand, a rule of equal importance is not to enlarge 
the construction of a given power, beyond the fair scope of its terms, 
merely because the restriction is inconvenient, impolitic, or even mis- 
chievous." {United States v. Fisher, 2 Cranch, 358.) 

"Nor should it be lost sight of that the government of the United 
States is one of limited and enumerated powers ; and that a depar- 
ture from the true import and sense of its powers, is pro tanto, the 
establishment of a new constitution." (1 Com. 410.) 

With these general guides of construction and interpretation, let 
us now consider whether the power granted to Congress, by this 
clause, " to secure for limited times, to authors, the exclusive right to 
their writings," transfers the whole subject of property of authors to 
the exclusive authority and control of Congress, so that that property 
ceases to exist at all without the legislation of Congress, or whether 
it leaves the author in the enjoyment of his property, as he had it 
before the adoption of the constitution, and merely attempts to im- 
prove what was supposed to be an imperfect enjoyment, by author- 
izing Congress to secure it. 

This is not the question, whether the power is concurrent or ex- 
clusive. It is before we arrive at that question. It may not be ne- 
cessary to discuss that question. For, if this should be decided in our 
favour, it would seem as if that must be of course. If the author's 
common law property is not taken away, nor made wholly dependent 
upon the legislation of Congress, but if Congress possess the mere 
partial power to secure it, then the property remains as at common law, 
subject to state legislation, and the auxiliary legislation of Congress. 
The question now is, simply as to a right to property. If we take the 
rules above cited, as guides of interpretation, can there be a question, 
as to the nature of the delegation of power, or its e.xtent or amount? 
The delegation is to secure exclusive rights; not to grant property or 
confirm property, or grant rights, or confirm or establish rights, but 
to secure rights. 



31 

We aire willing to admit, that this language is broad enough, and 
is adapted to transfer to Congress the whole legislation and control 
over inventions. There is at common law no property in them ; there 
is not even a legal right entitled to protection. Inventors have a 
moral or equitable right, but unknown to the law. Congress, there- 
fore, when authorized to secure their rights, are authorized to do every 
thing, and full power over the subject is delegated to them. 

But it does not follow, that because Congress are authorized to 
create, de novo, and to secure the right to inventions by mere force 
of the word secure, that they are therefore authorized by force of that 
word to create cJe novo, and then secure copy-rights. For a very 
different process would then take place in relation to the two things. 
In creating patents they take nothing away. . They deprive the inven- 
tor of no property. He had nothing, and they gave him all merely 
by securing. But if by the word secure, they are authorized to give 
an author all that he is afterwards to possess, the operation effects a 
total deprivation of his common law property. So that to allow the 
word " secure," to confer the same power over copy-rights, as over 
rights to inventions, is to make it a word of totally different meaning 
and import in the one case, from the other. The language is not 
broad enough, nor is it adapted to the taking away of property or 
pre-existing rights. We are therefore to reject the argument, that a 
copy-right must exist and be held solely under the constitution, be- 
cause patent-rights must be. 

What is there, then, in the delegation of the power to secure an 
author's exclusive rights, which should be construed to deprive him 
of his property, and make him dependent wholly on the security pro- 
vided ? I mean in the language itself, in which the power is dele- 
gated. 

Are not the words in themselves plain and clear, and is not the 
sense arising from them, distinct and perfect? and if so, is interpre- 
tation admissable ? (See rule ante.) And if not, is not the question 
settled ? For it never can be pretended that the naked words, 
authorizing Congress to secure rights, take away or affect the pro- 
perty in which those rights exist. 

Is there any necessity to resort to interpretation in this case, either 
to escape some absurd consequence, or to guard agains.t some fatal 
evil ? (See rule ante.) 

Would it not be stretching the word secure, beyoYid its fair sense, 
to say, that it has the force to deprive one of the thing intended to 
be secured ? (See rule ante.) 

If we expound the words of this clause in their plain, obvious, and 
common sense, what do they mean, except merely to authorize Con- 



32 

gress to secure the right, and is there any thing in the context which 
furnishes any ground to qualify or enlarge that sense? (See rule 
ante.) 

What is meant by securing a thing? Is there any instance, can 
any be mentioned, in which securing a thing, in any way affects it or 
deprives one of it ? Does not the word import the very reverse ? 

An author's rights, when the constitution was adopted, were pro- 
perty, were legal rights. We have, therefore, a right to consider the 
word secure, as used in a legal sense, and to see how the law uses 
and defines the word, when applied to pre-existing property and 
rights. This is probably the sense (although it is not different from 
the common sense) in which the word should be understood. 

We shall find, then, that the law is very tenacious of preserving 
property and original rights, and does not permit them to be in any 
way affected by being secured. 

Take the instance of a common debt. However it may be secured, 
the original debt always remains unaltered, nor will the law permit 
the security to be substituted for it or take its place. You cannot 
extinguish a debt by securing it ; and if a new or additional obliga- 
tion is taken, if taken as security, the original debt remains. It can 
only be extinguished, by an express agreement to take the new obli- 
gation in place of, and in full of the old one, in extinguishment of it. 
If taken as security, the law implies that it could not be the intention 
of the parties to extinguish what they were securing, and in this 
instance, therefore, we see that the import and force of the word 
secure, is to save, and not destroy the original right. 

Numerous instances can be adduced of this common law principle. 
In the case of duties on imports, the bond allowed to be taken, is 
construed to be only security, and that the indebtedness of the im- 
porter is not affected by it. In the case of promissory notes, whether 
by a person for his own debt, or by a partner for a partnership debt, 
or by a third person for the debt of another, the law presumes that 
they are intended as security only, and that the original debt there- 
fore remains, unless the reverse is expressly proved, and that they 
were not intended as security, but agreed to be accepted in place of 
the original debt. In the case of a mortgage of lands to secure a 
debt, the debt is held always to be the principal, and the mortgage 
a mere incident. The debt, so far from being destroyed or weakened 
by so high a security, imparts its own nature to the mortgage, con- 
verts it from real into personal estate, and draws the mortgage after 
it wherever it goes : for an assignment of the debt is an assignment 
of the mortgage. 

There would seem to le nothing, therefore, in the plain meaning 
of the word secure, which should alter, affect, or take away an 



S3 

author 's property in his writings. Indeed it seems too clear to admit 
of argument, that when the constitution authorizes Congress to se- 
cure an acknowledged pre-existing right, and does not authorize 
them to grant it, it is an express declaration that it subsists, and is to 
subsist independently of their power. 

But it may be said, that all the author can ask, or have, is security 
for his rights, and that this is all he had at common law : and that 
the constitutional clause does not take away his security or any part 
of it, but only transfers to Congress the power and duty to secure 
him, which before belonged to the states. 

We answer, that if this construction is derived from the import of 
the words themselves, it is strained beyond all bounds allowed by the 
rules of construction. If it is derived from interpretation, we shall 
show hereafter, that no rule of interpretation will warrant it. 

My only purpose now is to show, that if the author's common law 
rights are taken away, he is deprived of something real and valuable 
and important to him ; that he had at common law a right superior 
to, and more safe, valuable, and available, than any statute right can 
be ; and consequently more so than any the United States can give 
back to him. It is an unsafe and an unusual thing, to take away a 
common law remedy and make it rest on statute. A common 
law remedy is clear — a statute remedy doubtful and difficult. 

Whatever may be thought of there being, in some respects, such a 
thing as a national common law, I apprehend that the question can- 
not arise here ; and that it will not be pretended, that if Congress 
have the sole and exclusive power over the rights of authors conferred 
on them by the constitution, they are to confer a common law right, 
or any thing but a bare statute right, framed by, and dependant on 
the statute alone, and not entitled to be aided by the common law. 

Assuming, then, that Congress cannot give back a right in any 
respect a common law right, but a mere statute right, does the author 
get as valuable and safe a right as he had at the common law? 

Suppose, first, that Congress neglect to legislate at all. Where is 
his right ? For we are not now speaking of the powers of Congress, 
which supersede and suspend state powers by the act of Congress 
exercising them. We shall attempt to show, hereafter, that this is 
not within that class of powers. But here the assumption is, that 
the power is all delegated to Congress, and that the state powers 
and common law right have gone with it. Suppose, then. Congress 
neglect to legislate at all ? The author is wholly divested of his 
rights, and without any remedy. 

But suppose Congress pass an act to secure copy-rights, which is 
deemed to be a sufficient foundation for an action on the case, and 



34 

that such an action may be brought upon it, although not expressly 
given by it. Yet, suppose Congress forget to give the federal courts 
any jurisdiction over such action, or do not give it, because they mis- 
takenly suppose they already have it. What would be the author's 
situation ? Without a right to sue in the state courts, because the 
constitution has taken that away; and without a right to sue in the 
United States' courts, because Congress acted under a mistake. 

This is not a mere supposition. The case has actually happened 
in the statutes relating to copy-right. The statutes give no action on 
the case, but only provide penalties; and until the statute of 1819 
they gave no remedy in equity. And worst of all, until that statute, 
down from the time of the adoption of the constitution, there was no 
court which had any jurisdiction on the subject except the District 
Court, which had jurisdiction over the penalties only. All this is 
plain from the judiciary act and the statute of 1819. (3 Laws U. S., 
Mr. J. Storyh ed,, 1719. The patent law of 1793 gives an action 
on the case in the Circuit Court.) 

I have adduced this instance to show, that a statute remedy is not 
as safe as a common law remedy, and of course not as valuable. 

And it is apparent from the sedulous care which the law takes to 
preserve common law rights and remedies, and not permit them to 
be taken away by a statute, unless the statute expressly takes them 
away by negative words, that it esteems them as more valuable and 
of a higher and better nature than statutory rights and remedies. 
(See common law rules before cited.) 

At common law there is no right without a remedy, and even if a 
statute gives a right but gives no remedy, the common law will give 
the remedy. And the common law courts will, as a matter of 
course, administer it. Yet the common law, under all these advan- 
tages attending a statutory right given by its own legislatures, prefers 
the common law right, and will not allow it to be taken away except 
by express words for the purpose. 

How then should it be, with rights to derive their whole value from, 
and to be entitled to the only remedies provided by federal statutes — 
where the courts cannot assume jurisdiction, but it must be express- 
ly given to them by statute ? Is it to be supposed, that a statutory 
remedy provided by Congress can be equivalent in the eye of the 
law to a remedy of the common law ? 

I say, then, that if this clause of the constitution is to be construed 
as taking away the author's common law riglit, it does deprive him 
of a part of the security he had at common law, and does more than 
merely transfer to Congress a power and duty which before belonged 
to the states. And I ask whether the word secure can be found to 
possess any such meaning as to take away, and diminish, and dis- 



35 

turb, either by the common law or constitutional rules of con- 
struction. 

Are not the words of this clause of the constitution so " clear, plain, 
and determinate, that they require no interpretation ?" (See rule 
ante.) And is there any " necessity, in order to escape some absurd 
consequence, or to guard against some fatal evil, to admit of inter- 
pretation in the case ?" (76.) The absurd consequence, or fatal 
evil, if any exist, are not very apparent. But let us proceed, notwith- 
standing, to try the meaning of the clause by the usual rules of inter- 
pretation. 

If we leave the letter of the constitution, and proceed to inquire 
what is its spirit or intention, we are again stopped at the first step, 
by the rule that the spirit is to be collected chiefly from the letter. 
And is it possible to discover any thing, in the delegation of a power 
to secure a right, which can take away a right or destroy it ? On the 
contrary, is not the spirit so far as it can be discovered from the 
words, that the right admitted by the expression to pre-exist, was still 
to exist and be secured ? 

The context and subject-matter throw no light upon the question. 

If we resort then to the inquiry, what was the actual intention of 
the framers of the constitution, under the then existing circumstances, 
in adopting this clause of the constitution, I apprehend we shall find 
that their intention is fully and plainly expressed by the words them- 
selves, and that they had no intention to take away the author's com- 
mon law property. 

In discussing this question of intention, I shall be obliged, in some 
measure, to anticipate the next point, and go fully into the intention 
of the framers of the constitution, not only as to the question whether 
they intended to take away the common law property, and make it 
thereafter dependent on the legislation of Congress, but also as to 
the question, whether if they did mean to do so, they intended too to 
allow Congress to abridge, impair, and modify the property, and to 
annex conditions precedent to the right they might confer, or attach 
to it causes of forfeiture. The legislative intent as to both must be 
sought for in very nearly the same motives or causes. 

There is a rule of law on this subject, which reason would seem to 
require to be applied to the constitution as much as to statutes. 
This rule will be found in the following citations : 

" Statutes are not presumed to make any alteration in the common 
law, further or otherwise than the act does expressly declare ; there- 
fore, in all general matters, the law presumes the act did not intend 
to make any alteration ; for if the parliament had had that design, 



36 

they would have expressed it in the act." {II Mod. R. 148. IQVin. 
Ab. 512. " Statute;' E. 6. pi. 12.) 

"If a thing is at common law, a statute cannot restrain it, unless it 
be in negative words." (Plow. 113, and cases there cited.) 

"If a statute give a remedy in the affirmative, without a negative 
expressed or implied, for a matter which was actionable by the com- 
mon law, the party may sue at common law as well as upon the 
statute." (1 Ch. PI. 144.) 

This common law rule is illustrated by the following cases: 

" The statute of New-York (2 R. L. 210.) provides, that the courts 
of common pleas shall grant licenses to keep ferries, and provides a 
penalty of five dollars for keeping a ferry without a license. Harris 
had a license, and brought an action on the case against Almy for 
disturbing him in the enjoyment of his ferry. The court held that 
case would not lie. They said, If Harris had possessed a right at 
the common law to the exclusive enjoyment of the ferry, then the 
statute giving a remedy in the affirmative without a negative ex- 
pressed or implied, for a matter authorized by the common law, he 
might, notwithstanding the statute, have his remedy by action on the 
common law. But Harris had no exclusive right at the common 
law, nor any right but what he derived Jfrom the statute. Conse- 
quently he can have no right since the statute but those it gives ; 
and his remedy therefore must be under the statute, and the penalty 
only can be recovered." {Almy v. Harris, 5 Johns. R. 175.) 

The statute incorporating the plaintiffs (a turnpike company) pro- 
hibited cutting down the gates, and gave a penalty of twenty-five 
dollars, to be recovered by the company in an action of debt. {L. 
N. Y. 29 sess. ch. 50, p. 374, s. 9.) The company brought an ac- 
tion of trespass for cutting down a gate. It was insisted that the 
right did not exist at common law, and that the only remedy there- 
fore was on the statute to recover the penalty. But the court said, 
" They were entitled to their action of trespass at common law, and 
the penalty given by the statute was only an additional remedy." 
{The President, <^c. of the Farmers'^ Turnpike Road v. Coventry, 10 
/. R. 389.) 

Chief Justice Marshall (12 Wh. 653 — 4) lays great stress on the 
framers of the constitution being acquainted with the principles of 
law, and acting with reference to them. We are to look upon them 
as conversant with the maxims of the common law, for most of them 
were able lawyers. Able lawyers at all events drew up, shaped, and 
revised the instrument. Are we then to believe, that if they had 
any design or intention to take away the common law right, or to 
authorize Congress to take it away or impair it, they would, knowing 
of the above and the like common law maxims, have used the lun- 



37 

guage they have ? " Congress shall have power to promote the pro- 
gress of science, by securing for limited times to authors the exclu- 
sive right to their writings." Here is not a word indicative of any 
such intention. 

But on the contrary, there is the strongest reason to believe, from 
the language made use of that the framers of the constitution 
adopted it with a particular view to preserve the common law right 
untouched, and to withhold from Congress any power over it. This 
probability arises almost irresistibly, from the words made use of, at 
the time and under the circumstances that they were used. 

The case of Donaldson v. Becket was decided in the House of 
Lords in 1774, and it was by that case settled, that the statute of 
Anne took away the common law right at the expiration of twenty- 
eight years. The points presented to the twelve judges, show that 
the great question to be settled, and which must control the decision 
of the case was, whether the statute entirely abrogated the common 
law right, or, merely superadded securities to an existing right, by 
providing penalties for its violation. This was asserted constantly 
in every case that arose, (and they were until this time very frequent,) 
by the friends of a free and perpetual right, and denied by those who 
were opposed to it. The ablest men in England were of opinion, 
that the statute of Anne did not take away the common law right, 
but only secured it: that the security ceased at the end of twenty- 
eight years, but the right continued to exist. In the case oi Millar v. 
Taylor, this was the simple and only question ; and Mansfield, Willes 
and Aston were in favour of the perpetual right, notwithstanding the 
strong words of the statute. If the court will look into the opinions 
of the judges in that case, and in other cases, and also at the argu- 
ments of counsel, they will find that the great point in controversy, 
was, whether the statute of Anne created and granted the right, or 
merely secured it. The whole contest turned upon this, (see 4 Burr. 
23-22.3,2^21, Aston'sopi7iion; 2389,90, Willes' opinion ; 2405,6, 7, 
MansfieWs opinion.) The word secure is every where repeated. In 
these citations, as well as in Maugham on Literary Property, (p. 26,) 
will be found the history of the act of Anne. It appears that that act, 
as it went to the committee in parliament, was entitled an act to " se- 
cure" the rights of authors, and that it was afterwards altered to " vest.'''' 
This gave rise to great ingenuity as to the import of those words, it 
being admitted that, had it continued as it was first drawn, i. e. to 
" secure," it would not have taken away the common law right. 

In the case of Donaldson v. Beciet, the counsel for the defendant 

say of the statute of Anne, " To this end, the history of the bill, as it 

stands upon the journal of the House of Commons, together with 

the conference of the House of Lords, will clearly evince, that the 

5 



38 

legislature were not employed in securing an antecedent properipf 
but expressly declared that authors and booksellers had the sole pro- 
perty of books vested in them by that act." 

From the statute of Anne, then, down to 1774, there had been in 
England a continual contest about the words of that statute, and 
whether it was a statute to secure a right already existing. It agi- 
tated the literary world especially, because it belonged to them, and 
it agitated the courts. Cases of unequalled importance arose out of, 
and were decided upon the use of these words. — Yeates, J., calls the 
case of Millar v. Taylor, a case of "great expectation." This case 
occurred in 1769, and immediately followed the still greater case of 
Donaldson v. Becket, in which the twelve judges gave each an opinion 
in the House of Lords. These cases, therefore, occurred and were 
reported a few years before the adoption of the constitution. 

Were the framers of the constitution acquainted with the history 
of this controversy, and especially with these two cases ? We must 
remember, that in those days there were no American law books, 
and not many English, and that legal literature was not then buried 
under its own mass. Our ancestors looked to England for all their 
legal literature, and no doubt looked for it with interest ; and read 
such books as Burrow's Reports, and Brown's Parliamentary Cases, 
with avidity. American lawyers were indeed, at that time, the same 
as English lawyers in all that related to their science. Now, sup- 
pose our constitution had been drawn in England, by English law- 
yers, would any one ever have doubted whether this clause took 
away the common law right, or authorized Congress to do it ? 
Would it not, on the contrary, have been pronounced at once, to 
have been drawn with express reference to the great struggle which 
wasjust ended, and with a careful design not to take away, or allow 
Congress to take away, the common law right ? 

We have seen that the greatest and best men in England support- 
ed the common law right, even rgainst the difficulties created by the 
statute of Anne, and that in the division of the twelve judges, six 
were in favour of the perpetual right, and six against it. Yes, not- 
withstanding the words, " no longer,''^ in that statute. They, and 
judges before them, almost uniformly, were in favour of the right, 
even against the statute ; no doubt, from their deep conviction of 
the justice of the author's claims to a perpetual right. Is it not pro- 
bable, that the framers of our constitution agreed in opinion with 
these great and just men ; that they believed it wrorg to impair or 
take away an author's common law rights ; and, that when they 
gave Congress power over the subject, it was only to secure ? They 
gave them no morej because they thoaght that nobody should exer- 
cise more ; because they conceived that to regulate was unnecessary, 



39 

to deprive unjust. They were, no doubt, of opinion with Lord Mans- 
field, that an author ought to have a perpetual copy-right, although 
they might not choose, or might not agree, to empower Congress to 
make it perpetual. And, is it strange that they should have been of 
this opinion ? Ages had passed since the statute of Anne. They 
saw that the wiser and better portion of men thought that statute 
unjust, and favoured a perpetual right. They saw that in other 
countries it was useful to allow it. They were liberal men, inclined 
to go in opinion with liberal men. At all events, it is not probable 
that they would be unanimous where others were so much divided. 
I mean unanimous to take away the common law right. The pro- 
bability is, that there was a division of sentiment ; that some were in 
favour of a perpetual right, and others were not ; but all agreed in the 
propriety of having it secured by a national law for a limited time. 
Congress could then neither take it away, nor make it perpetual. 
But if we suppose them to have intended to take away, or to em- 
power Congress to take away the common law property, we must 
suppose them to have been clear and unanimous in their intention ; 
for it does not appear that it met with any objection, but, on the con- 
trary, it passed without opposition or discussion, and its propriety 
was not questioned. 

We must at least suppose that the framers of the constitution were 
divided, on this great and dividing question ; and if we do, we have no 
right to assume that the one side yielded to the other. We must take 
their words, and have no right to interpret them by a doubtful and 
uncertain intention. But the words themselves evince the intention 
to preserve the common law property, and of course, if there was a 
division, we must presume that words were chosen to suit the occa- 
sion, and to express the views in which they finally concurred. 

The Federalist, No. 43, shows that at least three of the convention, 
and the leaders of it, were well acquainted with the English law and 
litigation, and that the common law right was established. 

Finally, had the convention designed to take away, or to authorize 
Congress to take away the common law property, they vvrould have 
used the words vest or grant, and would have carefully avoided the 
word secure. 

But what reason can be discovered why the framers of the con- 
stitution should wish or intend to take away, or authorize Congress 
to take away, the common law right. What was the mischief they 
had in view ? 

Will it be said that the public have rights as well as the author, 
and that it is impolitic to allow a perpetual right ? Suppose we 
grant it. Yet what has the constitution to do with a mischief like 
this. It does not require a national power to cure it. The states 



40 

were fully adequate to provide a remedy themselves. And th« 
states gave Congress no powers, which they could as well exercise 
themselves. Will it, for a moment, be pretended, that the states 
could not regulate, limit, or take away, the right within their own 
territories, and that it was necessary to empower Congress to do it ? 

Or will it be said that it was designed to take from the states their 
power over copy-right, lest if a state were to protect the rights of 
authors, the citizens of other states might be curtailed of their rights 
within that state? The answer is obvious. No person can have 
any rights opposed to the author's. He has the property, and it 
cannot stand in the way of another's property or rights. Besides, 
the objection goes to the whole of state legislation on any subject, 
for a state may by general laws curtail or aifect the rights of citizens 
of other states in other particulars, and why be so careful to prevent 
them in this ? As we have already shown, copy-rights have in these 
respects, none of the mischiefs attending them which attend a right 
to inventions. 

There could be but one possible motive for making copy-rights a 
national concern, and that was because the states might not, or 
could not, individually, afford them a just protection. From this 
single motive, what intention are we to infer ? That, and that only, 
apparent on the face of the constitution : an intention to secure 
the right. 

Why is it, however, that if the public good was had in view, by 
the framers of the constitution, and not the author's benefit singly, 
either as regards patents or copy-rights, that they did not undertake 
to guard the citizens of the several states against the protection 
which the states might afford to inventions introduced from abroad. 
For these, as well as for the printing of foreign books, a state might, 
if it chose, grant monopolies. But this, as well as many other mis- 
chiefs which might spring from state legislation, it was not thought 
worth while to provide against. 

After the declaration of independence, and before the adoption of 
the constitution, the old Congress (8 vol. of JowrnoZ, 257.) recom- 
mended to the several states to pass laws securing to authors their 
copy=rights. The object of this resolution of course was to allow a 
citizen of one of the states a right to his copy in all the states, which, 
under the confederation, he could not have had without a law of every 
state. Several of the states passed laws in compliance with this re- 
commendation, and all of them show clearly that the English law 
and litigation on the subject were well understood. The act of Vir- 
ginia, passed 21st November, 1785, (1 Revised Code of Vir. 354.) is 
entitled an act for " securing" to authors their copy-right. The act 



41 

of Connecticut, passed January, 1783, {Statutes of Conn. 474.) pro- 
vides " that nothing in this act shall extend to affect, prejudice, or 
confirm the rights which any person may have to the printing or 
publishing of any book, pamphlet, or chart, at common law, in cases 
not mentioned in this act," &c. The act of the colony of New- 
York, (1 Jones and Varick'sed. Ls. N. Y. 321.) which professes merely 
to " secure" the rights of authors, has precisely the same provision 
as to common law rights. The act of Massachusetts is also entitled 
an act to " secure" the rights of authors. (1 Laws Mass. 94.) 
Other colonies had similar laws, to which it would be superfluous to 
refer. It is apparent from those cited, that before the adoption of 
the constitution even, all the colonies carefully avoided impairing the 
common law rights of authors, and with that view chose the word 
" secure," which had been rejected by the framers of the act of 
Anne. Will it be still contended, that the framers of the constitution 
immediately after, used that word with the intention to take away 
the common law right? 

Congress have legislated, especially by the act of 1790 and 1819, 
under the belief that the common law remedy was not taken away. 
They attempt nothing but to " secure." They even leave out the 
words ^'■no longer,'''' although our act is evidently borrowed, and 
copied from that of Anne. Is not this evidence, that they considered 
that they had power to limit the term secured by themselves, but not 
the common law right? They give no bill in equity, no action on 
the case, and they give no court jurisdiction. And in 1819, they pass 
an act to extend the jurisdiction of the Circuit Courts to cases arising 
under the laws relating to copy-rights. Is it not to be inferred from 
this, that they supposed the state courts had jurisdiction, in cases of 
piracy, of actions on the case and bills in equity ? For if they had 
not, an author until then, could have no such remedies. 

We come now the question, whether this is an exclusive or con- 
current power. 

Originally, it appears, that there were supposed to be only three 
instances, or kinds, of exclusive powers, contained in the constitu- 
tion. 1st. Such as were in terms exclusive. 2d. Where the same 
power was prohibited to the states ; and 3d. Where a similar 
authority in the states would be absolutely and totally contradictory 
and repugnant. The Federalist, (No. 32.) after thus classifying 
them, then proceeds: "I use these terms to distinguish this last case 
from another, which might appear to resemble it; but which would 
in fact be essentially different : I mean where the exercise of a con- 
current jurisdiction might be productive of occasional interferences 
in the policy of any branch of administration, but would not imply 



42 

any direct contradiction or repugnancy in point of constitutional 
authority." 

We contend that the case of copy-rights is clearly not within 
either of those kinds of exclusive power enumerated in the Federal- 
ist, and that it belongs to the other class, viz. the concurrent powers. 
What is the power here ? A power to secure the rights of authors. 
And the question is, whether the states may not protect and enforce 
the common law right, while the United States secure it? Is such a 
power totally and absolutely contradictory and repugnant? Is it 
not, on the contrary, perfectly consistent with the other ? It is just 
as consistent as a common law remedy is with a statute remedy — it is 
the same thing. There is not the slightest supposable difference. 
Both may exist and act in concert ; and it is impossible for them ever 
to conflict, unless the state undertakes to deprive an author of what 
Congress has secured to him. If that were to be a reason for taking 
away the state power, it would be a reason for depriving the states 
of ail power : for so long as they have power to legislate, they can 
pass laws to interrupt those of Congress. It is impossible to imagine 
a case where a power of Congress could receive so little interrup- 
tion from the legislation of the states. Because this is a power pri- 
marily over private right, and not for national purposes : and it is 
the only one of the kind in the constitution. 

The opinions of this court have been uniform, that a concurrent 
power, in cases like this, might exist and be exercised by the states. 
(Sec Houston V. Moore, 5 Wheaton's Reports, 48, 49, 50, 51, 52, 53, 
54, 55, 56. 

In that case, Mr. J. Story, who delivered the opinion of the court, 
observes, (p. 54, 55, 56.) 

" In considering this question, it is always to be kept in view, that 
the case, (viz. to call forth the militia,) is not of a new power granted 
to Congress, where no similar power already existed in the state. 
On the contrary, the states in virtue of their sovereignty, possessed 
general authority over their militia ; and the constitution carved out 
of that a specific power in certain enumerated cases. But the grant 
of such a power is not necessarily exclusive, unless the retaining of a 
concurrent power by the states he clearly repugnant to the grant. 
It does not strike me that there is any repugnancy in such concurrent 
power in the states." " Why may not a state call forth and employ 
the rest of its militia in aid of the United States for the constitutional 
purposes? It would not clash with the exerciseoflhe authority confided 
to Congress, and yet that it must necessarily clash with it in all cases, 
is the sole ground upon which the authority of Congress can be 
deemed exclusive. I am not prepared to assert, that a concurrent 
power is not retained by the states to provide for the calling forth its 



43 

own militia, as auxiliary to the power of Congress in the enumerated 
cases. The argument of the plaintiff is, that when a power is 
granted to Congress to legislate in specific cases, for purposes grow- 
ing out of the Union, the natural conclusion is, that the power is de- 
signed to be exclusive ; that the power is to be exercised for the good 
of the whole, by the will of the whole, and consistent with the inte- 
rests of the whole ; and that these objects can no where be so clearly 
seen, or so thoroughly weighed as in Congress, where the whole na- 
tion is represented. But the argument j)roves too much ; and pursued 
to its full extent, it would establish that all the powers granted to 
Congress are exclusive, unless where concurrent authority is express- 
ly reserved to the states," "It is conceded on all sides, and is in- 
deed beyond all reasonable doubt, that all state laws on this subject 
are subordinate to those constitutionally enacted by Congress, and 
that if there be any conflict or repugnancy between them, the state 
laws, to that extent, are inoperative and void." 

See also Mr. J. Story's Commentaries, 421 to 433. 

A doubt cannot exist that this is a concurrent power, according to 
the views of the Federalist, and of the Court in Houston v. Moore. 
But the states, it may be said, cannot exercise a concurrent power 
after Congress have exercised it. This is clearly contrary to what I 
have already cited from the Federalist, and from the opinion of the 
court in Houston v. Moore. All their observations are made on the 
supposition, that there maybe an actual exercise at the same time of 
the power by Congress and the stales. On any other supposition 
they would be insensible. 

This power, so far as it relates to patents, it was contended in 
Livingston v. Van Ingen, (9 Johns. Rep. 539.) was an exclusive power ; 
that is, that it became so as soon as Congress acted under it. And 
it was said by the counsel, that " a concurrent legislative power in 
the several states seems to be absurd. If exercised, it must be, 
either in conformity with that of Congress, or in enacting the same 
thing, and so nugatory, or else in collision with, or contradictory to 
the lav/ of Congress, and so void." 

The fallacy of this argument, and it is the only one I have met 
with, and appears to be adopted by Mr. J. Washington, in Houston 
V. Moore, (5 Wheaton, 23.) is, as it seems to me, in supposing that 
in all cases of concurrent powers, their exercise must be nugatory or 
in conflict with the laws of Congress. They may be neither ; they 
may be in addition to, but in perfect concurrence with the laws of 
Congress, as in this case. The security existing at common Jaw, as 
I have shown, is in addition to, is something better than the security 
afforded by Congress : as common law rights are better than mere 
statute rights. And at the same time, the security claimed under the 



u 

state laws is no more repugnant to the United States laws, than a 
common law remedy is to a statute remedy ; and we have seen that 
they may and do exist in perfect harmony. 

Judge Washington, in Houston v. Moore, uses the following lan- 
guage :— 

" This course of reasoning is intended as an answer to what 1 con- 
sider a novel and unconstitutional doctrine, that in cases where the 
state governments have a concurrent power of legislation with the 
national government, they may legislate upon any subject on which 
Congress has acted, provided the two laws are not in terms, or in 
their operation, contradictory and repugnant to each other." 

Now it is impossible to suppose that Judge Washington refers to 
that class of concurrent powers of which the Federalist and Judge 
Story speak. Their language assumes, that the concurrent powers 
spoken of by them, are exercised at the same time by Congress and 
the stales. We must suppose that he refers to those powers which 
the states may exercise until Congress exercises them, but which then 
assume the character of exclusive powers, because a similar authority 
in the states would be totally and absolutely repugnant and contradic- 
tory. Several of these powers had lately been much discussed, such as 
the bankruptcy, post-office, and militia powers, and the militia power 
(to organize them, &c.) was the one then under consideration ; and he 
probably had powers like these, and these only, in view. 

And it deserves consideration, whether a looseness of language has 
not crept into use as to these powers, of which these remarks of Mr. 
J. Washington are an instance. Should the powers to coin money, 
establish a post-office, pass bankrupt laws, and organize the militia, 
be called concurrent powers, even though, in the absence of Con- 
gressional legislation, the states exercise them ? If the states cannot 
exercise them concurrently with Congress, then they are not con- 
current powers. And the idea of a concurrent exercise is, one at the 
same time, a cotemporaneous exercise. The only exercise a state 
can have of one of these powers is a sole exercise; that is, until Con- 
gress begins to exercise it ; for it then becomes exclusive, and so 
can never be concurrent. These powers, therefore, maybe, and are 
properly called exclusive, but cannot be called concurrent. And it 
seems to me that the Federalist meant to embrace these powers in 
his third class of exclusive powers, which are exclusive from abso- 
lute repugnancy. And it also appears to me, that Mr. J. Wash- 
ington, in the observation I have quoted, refers to the same 
powers, although he calls them concurrent. He is speaking of 
powers as being concurrent, however repugnant, because the states 
can exercise them, until Congress begins ; while the Federalist is 
speaking of them as concurrent, because they are not totally repug- 



45 

nant, and can therefore be exercised simultaneously with Con- 
gress. 

It would be difficult to imagine a case (whatever may be thought as 
to patents, and with which we have nothing to do) where a power is 
more clearly concurrent from want of repugnancy than this. We 
must either suppose, that there are no such cases of a simultaneous 
exercise of a concurrent power as those spoken of by the Federahst 
and Mr. J. Story, or we must suppose this to be one of them. So far 
from being repugnant, it is hardly possible to conceive of a case in 
which they can ever conflict. There is probably less danger than in 
any other case that can be adduced from the constitution. 

There is high judicial authority, that this (even in case of patents) 
is a concurrent power, and may be simultaneously exercised by the 
states and by Congress ; although it has never been decided in this 
court. In Livingston v. Van Ingen, (9 Johns. Reports, 558.) the able 
judges of the New-York bench, and one of whom now sits in this 
court, unanimously held that the power might be exercised concur- 
rently by the states and by Congress ; and they maintained their 
opinions with great power of reasoning. (See Mr. J. Yates' reasons, 
560-1; Mr. J. Thomson's, 563-5-6-7-8; Ch. J. Kent's, 574.581.) 

It is well known to the court, that in the great case of Gibbons v. 
Ogden, (9 Wheaton''s Reports, 198.) the learned counsel who opened 
the case, abandoned the point, that the power of Congress was exclu- 
sive in case of patents, and that the court did not decide the point, 
although it was fully argued by the other counsel. 

I need not repeat the reasons I have already urged, why it may be 
exclusive in cases of patents but not of copy-right. 

In Ogden v. Saunders, (12 Wheaton, 305.) Mr. Justice Thomson 
notices the character of the powers as determining whether or not 
they are exclusive. If for national purposes, he considers them ex- 
clusive ; if over private affairs, as concurrent. 

There is not only great reason to presume that the states never in- 
tended to surrender this important power, but intended to reserve the 
right of exercising it themselves, if they should see fit; but it seems 
the part of liberality and humanity to leave it to them. Some of them 
may choose, in the long futurity which is to come, to give to authors 
more protection than others. And should they be prevented ? If 
they are to be, then a state, however liberally disposed, can give no 
more than all the rest will agree to. We have seen the great diver- 
sity of feeling and opinion which prevails among different nations, as 
well as individuals, as to the protection due to the rights of authors. 
In some countries their property is perpetual ; in some, it is of longer, 
and in others, of shorter duration. All admit, that common justice 
6 



46 

sanctions their claim to a perpetual property. But some conjecture 
that it might be prejudicial to the public to allow it. In this conflict 
between justice and public policy, is it not better that the states should 
be left free, to do authors as much justice within their respective terri- 
tories, as experience may prove to be consistent with the public good ? 
Perhaps, in some of them, as in Germany, the demands of justice 
might prove to be perfectly consistent with the dictates of policy. 

III. But if the states have divested themselves of power over the 
subject, still they have not given to Congress all the power they posr 
sessed. The power of Congress is a limited and qualified, and not 
a plenary power. They have not a general power to regulate the 
rights of authors for the public good, as well as for the security of the 
author, nor was it intended by the framers of the constitution to give 
them such a power. They have not the power for any purpose, or in 
any manner, to impair the property of an author, or annex conditions 
to his right of enjoyment of it. Their power is to secure his right ^ 
and the only necessarily implied power springing from this express 
-power, is, that they can annex such conditions to the security they 
give as they may think proper. 

What IS the power of Congress over copy-rights ? To secure. What 
is the power claimed? To regulate. For, if Congress can go an inch 
beyond securing, they can regulate entirely. This consequence is 
inevitable. If the framers of the constitution have given a power 
to regulate, or any thing but a power to secure, it is impossible to tell 
why they gave it. We have no means of knowing. If Congress 
can impair the property in one way, or for one purpose, they can in 
others with equal reason, for the constitution has given them absolute, 
unlimited power over the subject. Cannot Congress regulate com- 
merce as they please? And is not the power claimed here, equally 
a power to regulate? Was such a power intended to be given? 
Would not the word have been regulate instead of secure? 

The words are too plain, clear, and determinate, and the meaning 
arising on them is too distinct and perfect, to allow of interpretation. 
To give thenl this signification, is straining them beyond their fair 
sense, and not expounding them in their plain, obvious, and common 
sense. (See rules ante.) 

Take the word secure in its common sense, and what does it mean 1 
Will it permit one who is authorized to secure, in any way to vary, 
impair, or annex conditions precedent, or causes of forfeiture ? Sup- 
pose a man is authorized to secure a debt, can he compound it, or 
change the evidence of it, or make a new contract, or create con- 



47 

ditions precedent, or causes of forfeiture ? And yet, can a power be 
implied from the constitution, as it can be in a deed ? Is there no 
more strictness in implying powers in one case than in the other? 

If we leave the words of the statute, and resort to interpretation, 
to the intention of the convention, I have already shown that they 
could have had no intention but to secure the author's right, and that 
so far as the rights or interest of the public are concerned, the con- 
vention had no motive, and could have had none, for attending to them 
on this subject. The states could take care of them. It was un- 
necessary to invest the nation with power for this purpose. And had 
the convention designed to do it, they would have inserted in its 
natural place among the powers prohibited to the states, one preg- 
nant with vastly greater mischief and injustice ; the power of grant- 
ing monopolies for foreign books and inventions, 

I therefore believe, that if the states have resigned to Congress 
their power over copy-rights, and have none remaining in themselves, 
yet that they have given the power to Congress, with a qualification 
and limitation, and have confined it in their hands, as they had 
power to do, simply to securing the right of the author. If they 
have any power besides this, it is merely to abridge the period. 

Next. Have Congress impaired the author's right ? That is, sup- 
posing the common law remedies to be gone, and tiiat the author 
can have no remedy unless he has published the record, and deposited 
the copy in the Secretary of State's office. 

I answer, they have most essentially. They have entirely changed, 
and unnecessarily, the whole title which an author had at common 
law, and the evidence on which it rested. They have taken from 
him the natural common law title, and the evidence to support it, 
and have given him one of a most artificial and difficult character. 
And is not a man's title to property, his evidence of ownership, a 
part of the property itself, a part of its value? Is it not this which 
principally distinguishes real from personal estate? Suppose a man 
were to lose his title deeds, or one of them, what would be the value 
of his property ? 

What title had a man before the statute, and what has he now ? 
Before the statute, it was sufficient for him to prove himself the 
author. This he could do by proof in jjais, in a thousand ways. 
The proof of this is easy and imperishable, because it is the natural 
proof. The name of the author on the book, possession and claim 
of title alone, or first publication, would be prima facie sufficient evi- 
dence. And these are inherent, and inseparable from almost every 
case, as a part of its natural incidents. 

But suppose he must, as is contended, prove a compliance with 



the requisites of the statute. He is driven from all his safe and easj 
common law proofs. There can be no such thing as prima facie 
evidence offered. He must prove a publication for four successive 
weeks, forty-two years after it was made. Is he to keep a file of 
newspapers, and if he does not, what proof has he of publication ? 
How is he to prove the delivery of the volume ? The law provides 
for no record. He must call a witness, and then he cannot be safe 
for forty-two years, unless he files a bill to perpetuate testimony. 
Mr. Brent, the chief clerk in the department, who was there the 
whole time, can prove nothing ; and yet the first volume was pub- 
lished only eighteen years ago. Look at the evidence, the mass of 
evidence in this case, to prove what is as clear as day. Mr. Whea- 
ton's name is on the title page, the record is printed on the next 
page, and the record itself is in the clerk's office ; and yet, under 
this statute, according to the construction contended for, we cannot 
prove that Mr. Wheaton is the author. Can a statute which thus 
loads a right with burthensome and needless regulations, and makes 
it wholly dependent on accident, mistake, or omission, where it was 
free from them before, be said not to impair an author's common 
law property 1 Under the act, if we afford the common law proof, 
we prove nothing. It seems to be lost amidst the technical and 
artificial proofs required by the statute, and may be almost presumed, 
if not set up as a substantive ground of defence. 

If, then. Congress have not the power to impair the author's pro- 
perty, and if the requisites as to publication and delivery of the 
copy, if made conditions precedent, do impair it, they are so far un- 
constitutional, and we have a right to claim the benefit of the act, 
without performing them. 

In closing this point, I cannot but advert to the importance of this 
Court's giving its own construction to the constitution, independently 
of what may have been the construction of Congress. Congress 
are not a body properly constituted to construe the constitution. 
Their views of it are not entitled to great weight, as might be proved 
from many acts they have passed. It ought, at least, to appear, that 
their views were adopted after full discussion, which certainly does 
not appear in this case. This Court is the body, and the only one, 
which ought to be regarded as capable of giving a construction to 
the constitution. 

IV. A citizen of one state has the same common law property in 
his copy in other states, as the citizens of those states might have. 
And this common law property exists in the state of Pennsylvania : 
consequently the complainants are entitled to a copy-right at com- 



49 

mon law in that state, and can have a remedy in the Circuit Court 
of the United States for its violation, independently of the provisions 
of the acts of Congress ; the citizenship of the parties giving that 
court jurisdiction. 

The constitution of the United States provides that " the citizens 
of each state shall be entitled to all privileges and immunities of 
citizens in the several states." (Art. 4. s. 2.) 

The constitution by this provision designed to make, and does in 
fact make us one nation, living under the same laws. It designed to 
give to all the citizens of the United States, not merely the benefits 
and privileges secured to them by national laws, but the benefit of 
all the laws of all the states, and the privileges conferred by them. 
Under this provision, a citizen of New-York has all the privileges of 
the laws of Pennsylvania, whatever they may be. 

It is this provision which makes us one nation, and this only. It 
is this alone which gives to all the citizens of the United States uni- 
form and equal civil rights throughout all the territories of the nation. 
Other constitutional provisions secure political advantages : but 
without this we should be a mere league and not a nation. We 
should be several distinct nations. Vattel says, (p. 159, book i. chap. 
19.) " The whole of a country possessed by a nation, and subject 
to its laws, forms, as we have said, its territories, and it is a common 
country of all the individuals of the nation.'''' 

In this sense of a nation, this provision of the constitution makes 
us one, and makes all the states the common country of all the in- 
dividuals of the nation. 

An author, then, who is a citizen of one of the states, is entitled 
to have his property in his copy protected in every other state, accord- 
ing to the laws of such state, without the aid of any national law. 
The only question is, do the laws of the state give an author a pro- 
perty in his copy ; for if they do, who shall say he is not entitled to 
enjoy his property under such laws, as much as any other kind of 
property ? Has not a citizen of New-York a right to hold lands or 
any other property under the laws of Pennsylvania ? And if that 
state were to attempt to deprive him of the same rights as her own 
citizens enjoy, would it not be a violation of this clause of the con- 
stitution ? The truth is, a citizen of New-York is, so far as all his 
civil rights and privileges are concerned, a citizen of Pennsylvania. 
(See Mr. J. Story''s Commentaries, 674-5.) 

But it may be said that the fact that the convention authorized 
Congress to secure copy-rights, is an evidence that they considered 
that the citizens of the states had no right to their copy, in the other 
states. We answer, no. It is an evidence that they did not intend 
that the states should take away such rights as Congress might think 



50 

proper to secure. These they meant to place beyond the reach of 
the states. And for this purpose, and this alone, the clause was 
necessary. But besides securing so much to all the citizens of the 
United States, it leaves to all alike, the privileges allowed by state 
laws, to its own citizens. 

But, suppose this clause was inserted, because the framers of the 
constitution did not foresee the application to this identical case, of 
the clause which secures to all citizens equal rights. Would this be 
a reason why that clause should not be applied to the case, if such 
is its legitimate operation ? 

The object, the great principle of the citizen clause is, unquestion- 
ably, to make us one nation, and secure to us all equal rights through- 
out all the territories of the nation. We are bound to carry out this 
principle wherever it will lead. It is the soul, the spirit, the vital 
part of the constitution. It is the only clause which can give life and 
vigour to this newly created body. And is it to be supposed, that in 
the great work of making one nation out of many nations, those who 
were engaged in it would foresee all its consequences ? Had it then 
entered into the heart of man, to conceive the benefits that were to 
flow from the Union ? And are we to be deprived of its benefits in a 
single instance, because that instance'was not foreseen ? If you do not 
apply this clause to literary property, to what property can you apply 
it ? And if it is not applied to all property, where are the citizens to 
look for the protection of their interests, which are subject to the le- 
gislation of other states than their own. 

An author's common law property in his copy exists in Penn- 
sylvania. 

Pennsylvania was settled about the year 1682 : in that year Penn 
came out and established the government. 

Judge Chase, in the United States v. Worrall, (1 Ball R. 384,) 
says, " the American colonies brought hither as a birth-right and in. 
heritance, so much of the common law as was applicable to their 
local situation and change of circumstances." (And see I Mr. J, 
Story''s Commentaries, 132 to 140.) 

Chief Justice M'Kean says, (I Ball. Reports, 67,) " The common 
laiD of England has always been in force in Pennsylvania. All statutes 
made in Great Britain before the settlement of Pennsylvania have no 
force here, unless, they are convenient, and adapted to the circum- 
stances of the country. And all statutes made since the settlement 
have no force here, unless, the colonies are particularly named." 

He says further, "the first legislature under the commonwealth has 
clearly fixed the rule respecting the extension of British statutes, by 



51 

enacting that such of the statutes as have been in force, in the late 
province of Pennsylvania, shall remain in force until altered by the 
legislature." {lb. 74.) 

There has never been any statute, either of the colony or state of 
Pennsylvania, respecting copy-rights. There was no statute in En- 
gland, prior to that of Anne, and the statute of Anne does not apply, 
because it was not passed until after the settlement of Pennsylvania ; 
so that in that state there is no statute law on the subject, and the 
common law, if any, prevails. 

And will it be denied, that this is a part of the common law of Penn- 
sylvania, which the settlers of that state brought with them as their 
birth-right ? 

We have already seen, that at the emigration of Penn, this property 
had been known and acknowledged for a century as the unquestioned 
law of the realm. 

And why should not this common law rule, that an author has the 
property in his copy, have been brought over by Penn and his fol- 
lowers ? Did he establish a colony on narrow and illiberal principles, 
or with those enlightened views, which have justly ranked his name 
with those of the wisest legislators ? Is it to be believed, that Penn- 
sylvania, destined to lead all her sister colonies in the promotion of 
science, literature, and the arts, repudiated their natural, established, 
and admitted claim to protection ? That Penn, who would not un- 
justly deprive an Indian of a rood of his wild, his almost unappropria- 
ted hunting grounds, vi^ould take from an author, the well earnt fruits 
of his merit and his labour? Can it be shown that this principle of 
the common law is inapplicable to Pennsylvania ? If it cannot be, 
then it is the law of Pennsylvania. 

But is the question whether or not it is applicable in Pennsylvania 
an open one ? Ch. J. M'Kean says, without any exception, " the com- 
mon law of England has always been in force in Pennsylvania." 

V. The publication of the record in the newspapers, and the de- 
livery of the copy to the secretary of state, are not made conditions 
precedent at all by the acts of Congress, or if at all, only as to the 
right to the security provided by the acts. A non-observance of the 
statutory directions in these particulars, does not deprive the author 
of the ordinary remedies by an action on the case and bill in equity. 
Besides, the publication of the record, and delivery of the copy, were 
at most intended only as a means of notice of the author's right ; and 
actual notice, in this case abundantly shown, dispenses with those 
modes of constructive notice. 



52 

The first section of the act of 1790, (1 Laws U. S. 94, Mr. J. Story's 
ed.) declares, that the author shall have the sole right for fourteen 
years '■'■from the recording the title in the clerk's office as is hereinafter 
directed." (For all the laws of the United States on the subject of 
copy-rights, see Appendix.) 

The second section then declares, that if any person " from and after 
the recording of the title and publishing the same as aforesaid," shall 
print, &ic., he shaW forfeit, &c. 

The third section provides, that "No person shall be entitled to the 
benefit of this act, unless he shall first deposit a printed copy of the 
title in the clerk's office," &c., and the same section then requires the 
clerk to record the title, and the author, or proprietor, to publish the 
record which the clerk enters, in the newspapers. 

The fourth section directs the author, or proprietor, within six 
months after publication, to deliver to the secretary of state, a copy 
of the book, to be preserved in his office. 

The first and third sections show, that the author's rights vest com- 
pletely on the recording in the clerk's office. In one, it is declared 
that he shall have the sole right, from that time ; in the other, that 
he shall not have the benefit of the act, until it is done. Can any 
thing be more clear, from this act's being twice fixed upon in differ- 
ent sections of the statute, as the period when his right is to vest, 
that Congress intended it to vest then ? 

The second section, which gives the penalties, studiously fixes 
upon a different period for them to attach, viz. : after the recording 
and publishing. 

The fourth section is insulated, stands by itself, and provides for a 
distinct act, not referred to or in any way connected with the right or 
the penalties by the sections providing for them, and says nothing 
about them. 

The proviso at the end of the first section, relates only to pub- 
lishing where the author secures a second term. It has no reference 
to the first term. 

The first and third sections then, show when the right attaches, 
the second shows when the penalties attach, and the fourth is stu- 
diously separated from them, and wholly independent of them. 

It is obvious, therefore, that on the construction of this act alone, 
neither the publication of the record, nor the delivery of the copy, 
are in any way connected with the right; and that the delivery of the 
copy has nothing to do even with the penalties and forfeitures; for 
the statute distinctly points out what is to be done to make them 
attach, viz. : the recording, and publishing the record. 

This act was undoubtedly drawn after the act of Anne, and there- 
fore, legislative intention may be ascertained by a reference to that 



53 

act. There are material differences, it is true, arising principally 
from the fact, that Congress were legislating within their limited 
power of securing the right, while the act of Anne assumes to grant 
it de novo, and entirely regulate it. One difference may be seen in 
the titles of the acts. One is to secure, the other to vest. One cuts 
off the duration of the right, by the words no longer, the other stu- 
diously omits those words. 

The record in the clerk's office, is intended to correspond with the 
registry at Stationers'-hall, provided for by the second section of the 
act of Anne. The delivery of the copy to the secretary of state, 
corresponds with the delivery of the nine copies to the libraries, and 
among them to the roi/al library, provided for by the fifth section. 
The secretary of state's, or government library, undoubtedly an- 
swers to this royal library. (For these acts, see Maugham, 22. 50.) 

Maugham, {Introduction, p. 14.) shows that these copies are re- 
quired in all countries, and are not intended as notice. He speaks 
of the copy in America, as standing on the same footing exactly as 
in other countries. (See also 3 Datfs RejJ. 145.) 

The non-delivery of these copies, by the act of Anne, had nothing 
to do with either the right of the author, or the penalties of piracy. 
A distinct sanction was provided to enforce the delivery, viz. : a for- 
feiture of the value of the copies, and of five pounds for every copy. 
Congress, by the act of 1790, did not see fit to follow the act of 
Anne, by providing any such sanction ; no doubt, because they were 
engaged solely in discharging their constitutional power of securing 
the right. 

So the second section of the act confines the registry at Stationers' 
hall to the penalties, and declares that they shall not be incurred un- 
less that is done, as persons might otherwise ofiend through igno- 
rance. But the registry has no effect upon the author's rigtit. 
(See Maugham, 28, 29. 157, and Bechford v. Hood, 7 T. R. 620.) 

By the act of Anne, therefore, the nine copies and the registrv had 
nothing to do with the author's right ; and as our act is evidently 
drawn after that, the presumption is, that the similar acts required 
to be done by our act, also had nothing to do with the author's 
right, except that the recording is expressly made a pre-requisite. 

The copy to the secretary of state is a mere donation from the 
author. Congress give him no equivalent for it. The clerk is paid 
for the record, and what do the government give the author for the 
copy but security ? Have they a right to sell the security ; to put 
a price on the exercise of their constitutional powers? What right 
does the constitution give them to require a donation from the 
author? And will it be believed that they intended to forfeit his 
property if he did not furnish it? 

7 



54 

We have seen that the act declares unconditionally, that the right 
of the author shall absolutely attach on recording the title in the 
Clerk's office. Afterwards it provides that the record shall be pub- 
lished, and it gives the author a month to publish it. So it allows the 
author six months to deliver the copy to the secretary of state. The 
allowance of these periods, for the performance of those acts, after 
the right has attached, and the impossibility of publishing until it 
has attached, (for the record must be made before it can be pub- 
lished,) show most conclusively, that this act of 1790 does not of 
itself make the publication and delivery conditions precedent. 

Natural rights are generally known by their own incidents. Pro- 
perty always carries with it its own indicia of ownership, and literary 
property not less than any other. The super-addition of record 
evidence, the highest known to the law, and all that is required of 
ownership of real estate, was probably deemed sufficient by Con- 
gress ; and they, therefore, required no other of the right of an 
author. It would be a fair presumption, that when they had required 
enough, they would not go on to require a superfluity. 

But the publication of the record and delivery of the copy, have 
been held by a very numerous, learned, and able court, on full argu- 
ment, (the Court of Errors, in Connecticut, composed of the twelve 
judges,) to be only directory, and to have nothing to do with the 
author's right. {Nicholas v. Rvggles, 3 Day''s Reports, 145.) 

In that case the court say : — " The provisions of the statute which 
require the author to publish the title of his book in a newspaper, 
and to deliver a copy of the work itself to the secretary of state, 
are merely directory, and constitute no part of the essential requisites 
for securing the copy-right. The publication in the newspapers is 
intended as legal notice of the rights secured to the author, but can- 
not be necessary where actual notice is brought home to the party as 
in this case. The copy to be delivered to the secretary of state 
appears to be designed for public purposes, and has no connexion 
with the copy-right." 

It may be as well here to notice a point that cannot have much 
bearin"' on the case. The learned judge in the court below, appears 
to consider the copy in the secretary of state's office as intended to 
remain there as notice. It is difficult to imagine how it could be in- 
tended as notice, when it is merely to be left there, and no record or 
memorandum is to be kept of it, and it is impossible to tell when, or 
how, or from whom it came there, or for what purpose. The same 
book in any other place would afford exacdy the same notice. 

But it is said, although the publication of the record and delivery 
of the copy are not conditions precedent by the act of 1790, they 



55 

are made so by the act of 1802. And that this has been decided in 
the case of Ewer v. Coxe^ (4 Wash. C. C. R. 487.) i. e. as to the 
publication of the record. 

In that case, which was a bill for an injunction, it was admitted as 
a fact in the case that no publication had been made. Whether a 
copy was delivered, was not a fact in question in the case. In our 
case, publication is proved as to almost all the volumes, and we shall 
contend that there is sufficient evidence of the delivery of the copies. 
At all events, it is not an admitted fact that they were not delivered. 
On the contrary, I am instructed to say that the copies were all de- 
livered by the author. 

Judge Washington admits, and indeed shows, that these were not 
conditions precedent under the act of 1790, but he holds that they 
are made so by the words " in addition to the requisites enjoined," 
contained in the first section of the act of 1802. 

But we contend, that he has arrived at this conclusion by a mis- 
apprehension of the true import of those words, as he shows himself, 
and that he has adopted the worst and most improbable construc- 
tion, when another was equally, if not more eligible. 

He says the act of 1802 " declares that the persons seeking to 
obtain his right, sha.\\ perform this new requisition," (i. e. printing the 
record on the title-page,) " rn addition to those prescribed in the 3d 
and 4th sections of the act of 1790." 

JVow, there is no such language in the first section of the last act. 
The language of the act is, " he shall, in addition to the requisites en- 
joined in the 3d and 4th sections of said act, give information, by 
causing a copy of the record which by said act he is required to pub- 
lish, to be inserted at full length in the title-page," &c. 

If the language of this section had been, " he shall, in addition to 
performing the requisites enjoined by the 3d and 4th sections," &c., 
the construction of Judge Washington would have had some plausi- 
bility. Even if the language had been, "he shall, in addition to the 
requisites enjoined by the 3d and 4th sections perform^' something 
else, by forcing the word perform to apply to the antecedent, as well 
as subsequent act spoken of, this construction might possibly be ap- 
plicable. But the act does not use the word perform any where. 
It says " In addition to the requisites enjoined, he shall give informa- 
tion." 

We contend, therefore, that Mr. J. Washington has strained the 
meaning of the words ; and we contend that the words " iti addition 
to the requisites," were not designed to have any enacting power, but 
were used merely in a conjunctive sense, to connect this act with the 
other, and to show that the legislature were engaged in superadding 
a requisite to those of the former act, whatever those requisites 



56 

might be, and^without any design to alter them. We contend, thai 
in addition to the requisites, means the same as " over and above the 
requisites,'''' or " besides the requisites.'''' The meaning is, that the 
new requisite is to be in addition to, and not in lieu of those pre- 
scribed by the act of 1790 ; making no alteration in the quality of 
those requisites, but leaving such as were conditions precedent still 
so, and conditions to be performed after the author is entitled to the 
benefit of the act to remain conditions subsequent. 

The truth is, had Congress designed by the act of 1802, simply to 
provide for the printing of the record on the title-leaf of the book, 
and not in any manner to affect the requisites of the act of 1190, 
they would have used exactly the same language as they have used. 
What could be more natural in providing cumulative requisites by 
the new act, than to refer at the outset to the old, to show that they 
were cumulative? And then they would have said exactly what the 
act does say. Now, if this is so, and this meaning avoids the injustice 
and absurdity of the other construction, why not adopt it ? 

But it may be said, that the new act by calling the publication and 
the delivery requisites, makes them so. It is a sufficient answer to 
say, that it speaks of them as requisites required by the other act. 
It says " which by said act he is required to publish." It does not 
profess to change their character as requisites, but refers to them as 
requisites established by the former act. Now they maybe requisites, 
and yet not pre-requisites or conditions precedent. And we have 
seen that they were not by the first act. 

Where then, I would ask, is the enacting language of this second 
act, as to publication and delivery; for without enacting language, 
there can be no enactment. We are not to construe a statute as we 
do a deed, according to its legal effect. We must have the intention 
to enact and enacting language, or there can be no enactment. 
And this intention to enact must be apparent. It is most remarkable, 
that Judge Washington in his whole opinion, does not once inquire 
what was the intention of Congress. He merely takes the words, 
and says s\ich is their legal effect. He seems to consider the words 
of a statute unyielding and inflexible. 

But it is the duty of this court, before it allows property to be un- 
necessarily and wantonly sacrificed, even if the words of an act are 
clear and free from doubt on their face, to look carefully at the inten- 
tion of the legislature, to look at the spirit of the law and its conse- 
quences, and at the old law, the mischief, and the remedy. 

What then was the object the legislature professed to have in 
view ? 

It seems that prints and engravings, until this act of 1802, were 
not protected, and the great object was undoubtedly to afford them 



57 

protection, as well as books and inventions. The acts in England 
on this subject, were those of 8 Geo. II. ch. 13, 7 Geo. III. ch. 38, 
and 17 Geo. III. ch. 57. (See Maugham, 77. 79. 81.) These acts 
contain a new provision, i. e. one not contained in the statute of 
Anne, as to copy-right, requiring the date and name of the engraver 
to be printed on the engraving. Our Congress, when about to pass 
the act of 1802, no doubt referred to these acts, and perceived this 
requirement, and required the same thing as to prints in that act. 
They, in doing this, were no doubt led to observe that this was an 
easy and simple kind of notice to accompany books, and they insert- 
ed the first section, requiring it to be printed on the title-leaf of books 
also. 

The mischief, therefore, which the legislature had principally in 
view, was to give protection to prints and engravings. The clause 
as to books, was a thought which occurred to them in the course of 
their legislating about their main object, and was not probably called 
for by any mischief as to books. 

And what was the old law, and what mischief could there have 
been ? Was not abundant notice provided by the old law ? Was 
not a record to be made of the author's right, over and above all 
the evidences of ownership, that must naturally and necessarily exist? 
A record, which is deemed sufficient notice of ownership, where there 
are no indicia of ownership, as in case of lands. And besides this 
notice, the new act requires a new kind of notice, and one which 
would seem to supersede the necessity of all other notice, viz : the 
printing the record on the title-leaf. Now what mischief was there 
left to remedy ? Was more notice necessary ? Was it necessary to 
publish the record also, and put the copy in the secretary of state's 
office for notice ? If a man opened the book, would he not see the 
record printed there, and if he went to the clerk's office, would he 
not find the record itself? Is it then to be believed, that where there 
was and could be no mischief, where there was this redundancy of 
notice already, that the legislature intended by these words, which 
we have seen admit as well, or better, of a different construction, 
these words, "in addition to the requisites," to make these requisites 
notice, or consider them essential, otherwise than they were under 
the former act ? If there was any mischief, the distinct remedy pro- 
vided de novo by this act was abundantly sufficient. 

The reason and spirit of the act are equally opposed to this con- 
struction. Congress are legislating under their constitutional power, 
to secure an author's rights. Even if they have the constitutional 
power to impair, it is to be presumed that where their main power 
is to secure, they would not impair unnecessarily. What is the pe- 
nalty which an author has to pay, if he is unable to prove a perform- 



58 

ance of all these conditions precedent? If he cannot prove that he 
gave a copy to the secretary of state ? He forfeits his whole pro- 
perty. Can it be believed that Congress, in securing an author's 
rights, would create forfeitures for such trifling causes as this ? There 
might have been a moderate penalty afiixed. Some fine or forfeiture 
not so totally disproportioned. The statute of Anne, as we have 
seen, affixes such a penalty. Congress probably did not affix it, 
because their power was limited to securing. But the secretary of 
state would have a right of action to recover the copy, and this 
would be enough. The total disproportionateness of the forfeiture 
of the property, as a sanction, proves that it never was intended as 
a sanction. 

But above all, let us look at the effi;ct and consequences of the 
construction contended for. There are four things which an author 
must be able, during twenty-eight years, to prove that he has done. 
He must prove the record, its publication, its insertion on the title- 
leaf, and a delivery of the copy to the secretary of state. These 
are made parts of his chain of title, and if he loses one of them, he 
loses his property. And all for what ? To prove notice that he is 
the author. To prove what must necessarily be known without 
them. To prove what a court of equity, in all cases, presumes from 
slight circumstances. And all this he is required to do, to entitle 
himself to property to which the common law gave him a perfect 
right and title without them. 

Is it not cruel, unreasonable, and absurd, thus to encumber and 
endanger an author's rights, without any object ? 

Do not these things endanger an author's rights, and almost com- 
pel him to forfeit them ? Is it possible with that ordinary care which 
men bestow on human affairs, to preserve, for twenty-eight years, the 
necessary evidence of title, or to prove it at all? 

What the legislature has made conditions precedent, as we admit, 
there is no difficulty in proving. The record proves itself. The 
imprint of the record on the title-page proves itself These things 
the legislature might well make conditions precedent. The proof 
of them is imperishable, and always to be had; and this is, no doubt, 
one reason, why Congress has attached the right to them as condi- 
tions precedent. 

But durinof this period of twenty-eight years, how is publication 
in the newspapers to be proved ? Is every author to keep a file of 
them to protect his right ? Is he to call witnesses to prove a fact 
which the law supposes to be incapable of proof in six years ? How 
is he to prove the delivery to the secretary of state ? Can it be done 
in any way, except by calling witnesses to the fact ? The judge in 
the court below supposed that a certificate from the secretary of 



59 

state would do. But does the law know any such evidence? The 
secretary of state is required to keep no record, to give no certifi- 
cate, and if he does so, it is without law. And would his certificate 
of this fact be proof any more than the certificate of any other per- 
son? Yet it is the only proof that the nature of the case admits of. 
The judge below was driven to consider this as good proof, because 
it would be impossible to prove the fact by the testimony of witnesses. 
The necessity of the case, compels him to admit evidence unknown 
to the rules of law. If Congress had intended to create such a case, 
would they not have foreseen and prevented such a necessity? 

Since Congress have taken care to see that the author should have 
the means of proving what they have clearly made conditions 
precedent, is it not presumable that they did not mean to make those 
things conditions precedent, which they have not enabled him to 
prove, and of which, in the nature of things, he can have no proof? 

If the acts of Congress take away the author's common law pro- 
perty, which they are required to secure, they ought surely to be con- 
strued favourably to the author. They should be construed under 
the belief, that having removed an ample foundation and protection, 
they intended in common justice to provide a substitute of a similar 
character, and not a mere trap or quicksand. 

Again, if we are to consider the requisites of the first act, as made 
conditions precedent by the second, it in fact repeals very important 
provisions of the first act, destroys its symmetry and relative bearings, 
and deranges the whole. It completely reverses the spirit and inten- 
tion of the first act. I say it repeals important provisions of that act, 
because that gave a security to the rights of authors, which this act 
takes away. Are we to imply such an effect, or give the words such 
a construction, if they will admit of any other? 

The framers of the first act no doubt considered its provisions 
well, and understood the reason and effect of each one of them. 
They clothed them in the language in which they are expressed, and 
arranged them in their proper order. Those provisions were, before 
being passed, presented to the eye and mind of the legislature in a 
distinct and bodily shape. How was this with the legislature who 
passed the second act ? Did they see the provisions of the first act ? 
Is there any evidence of it ? They are not expressed in the second 
act. Is it to be supposed, that without having those provisions be- 
fore them, in the bill which they were considering, they would weigh 
them, understand them, and the objects to be accomplished by them, 
and compare the importance of those objects, with the means pro- 
vided for attaining them? Can this be supposed? Is it the course 
of legislation ? And if not, then are we to suppose that the second 
legislature would give these old provisions intentionally an effect and 



60 

operation never dreamt of by the first, which they manifestly avoided, 
and would have revolted from ? And all this, by a single word which 
might naturally have been used almost as an expletive, at any rate, 
merely with a conjunctive meaning. 

Is it not rather to be supposed that a legislature, passing an act in 
pari materia, and expressing no different intention, would not be go- 
verned by a totally different intention from the former one ? Would 
the second legislature, when designing to make a new provision, by 
a single word incorporate with such new provision several old and 
subsisting provisions of a former act, and give such old provisions a 
totally new and most important effect. And would they have done 
it without intimating any reason, or any other intimation of such an 
intention, than what can be derived from, at best, but a forced, un- 
certain, and cruel interpretation of their words. Might we not 
rather expect, that a statute, making such momentous and novel 
alterations in the existing statute, would recite the evils which re- 
quired a remedy, and distinctly enact such remedy in an intelligible 
form ? But this first section, as Mr. J. Washington construes it, is a 
mere trap for the unwary, and might have remained a century on 
the statute-book, and no one but some ingenious counsel have sus- 
pected that it would bear such a construction. Can this be the way 
that Congress enacts a penal law, which is to deprive one of his pro- 
perty ; in our case of the fruits of a laborious life ? 

Until Mr. J. Washington's decision, this construction certainly was 
never dreamt of; and the proof is, the general neglect to deposit a 
copy in the secretary of state's office. 

There are no negative words in this act of 1802, and no words 
which take away a right conferred by the act of 1790. But as we 
have seen, the author has a right on recording his title. Whereas he 
has six months to deposit the copy in. But if the act of 1802 makes 
the delivery of the copy a pre-requisite, it takes away the right ob- 
tained by recording the title. That this cannot be done by affirma- 
tive words, see 19 Viner's Abridgment, 510. E. 6. Plowden, 111. 
2 Institute, 200. 

And for construction of statutes, see 19 Viner''s Abridgment, 510. 
E. 6 — 1 Blackstone^s Commentaries, 87. 

The second statute cannot be a declaratory statute, because 
statutes are only declaratory of the common law. (1 Blackstoiie^ s 
Commentaries, 86.) 

If Congress, in passing the second act, mistook the first, this court 
will disregard the construction they have erroneously put upon it. 
(University v. Bryer, 16 East. 316.) 

In Postmaster General v. Early, (12 Wlieaton's Reports, 148.) the 
words were clearly enacting words. They gave the Circuit Court ju- 



61 

risdiction, as much as the state and district courts, and there was no 
reason why they should not. The words were all the court could 
look to. There was no reason, or spirit, or intention of the law about 
it. It was not a case for interpretation. There was no evidence in 
the second act, except the title, (which, as the court say, cannot re- 
strain the enacting clause,) that the legislature mistook the former 
law : they refer to no other act. Whereas, in our case, it does ap- 
pear in the body of the act, that Congress mistook the former law 
and they do not pretend to enact any thing more than what they sup- 
posed was enacted by the previous law which they refer to. Besides, 
the effect and consequences of the post-ofBce act were beneficial.' 
Whereas, in our case, they are productive of no possible good, but the 
highest injustice. 

The late act of 1831, {Laws of U. S. 11.) is a construction in 
our favour of the previous laws of 1790 and 1802. It incorporates 
the two acts in one, and makes the record and imprint of the record 
on the title-page, the only conditions precedent. As to the delivery 
of the copy, it is only directory. When neither the first act nor last 
make this a condition precedent, are we to give such a construction 
to the words of the intermediate act? (See ss. 1 and 5.) Is legisla- 
tive intention so fickle ? Are we not rather to construe the three to. 
gether, as statutes in pari materia are always construed ? 

The little confidence that can be placed in a subsequept Congress, 
especially one long subsequent, knowing what former legislation on 
the same subject has taken place, or considering it and construing 
it as it ought to be, is apparent from the legislation of Congress on this 
very subject of copy-right. Until 1819, no court had jurisdiction of 
actions or bills in equity, unless the state courts had. But it must be, 
that Congress thought otherwise. So the title of the act o( 1819 only 
includes patents, while the body of it extends to copy-rights ; and it 
was probably because that act was found necessary in cases of patents, 
that copy-rights were then thought of. Congress are not a suitable 
body to interpret their own acts. Their business is to make laws, 
and not to interpret them. 

The words "in addition to the requisites enjoined" by the former 
act, are a mere allusion to^that act. Are they, a mere allusion, to dis- 
order that whole act, alter its effect and work injustice ? Is such an 
allusion, either a declaratory act, or an enactment of itself ? 

Again, the act of 1802 does not make the publication and delivery 
conditions precedent, because it is impossible that they should be so. 
The first act vests the right on recording the title. It then gives two 
months to publish the record, and six months to deliver the copy. A 
condition precedent is an act to be done precedently. Now it is im- 



62 

possible to publish the record until the record is first made, and the 
right attaches on the making of the record. 

Mr. J. Washington refers to the second section of the act of 1802j 
as confirming his construction. But even that does not make the 
publication a condition precedent, for it is impossible that it should be 
so. That, also, gives the right from the recording in the clerk's 
office. But it is impossible to publish the record until it is enteredj 
and then the right instantly attaches. The delivery stands on the 
same ground as the publication. Both go together. 

That these things, being to be performed after the right has attach'^ 
ed, are not conditions precedent, but, at most, causes of forfeiture or 
defeasances only. (See 9 WendaWs Reports, 351. The People v. 
The Manhattan Company.) 

And see same case, that we are not bound to prove their per- 
formance. They must make out the defeasance. There is no evi- 
dence of it in this case. In Ewer v. Coxe, it must be remembered, 
the fact of non-publication or ground of forfeiture was admitted. 

But even if it were a cause of forfeiture, I apprehend it could not be 
set up in this incidental manner as a ground of defence. The for- 
feiture should first be established by proceedings for the purpose, and 
by the judgment of court. By the constitution, no person can be de- 
prived of property without due process of law. 

Again ; the act of 1802 declares that the author, " before he shall 
be entitled to the benefit of the act" of 1790, shall, in addition to the 
requisites, &c. Now what was the benefit of that act ? It is entitled 
an act to secure the author's right, and the power of Congress is to 
secure the right, i. e. an existing right. How does the act secure the 
right ? Only by penalties and forfeitures. It gives no action on the 
case, no bill in equity, and if it had given them, it would have been, 
as to them, wholly inoperative, for no court had jurisdiction of them. 
What, then, was meant by, what, in fact, was the " benefit of that act." 
Certainly the penalties and forfeitures ; nothing else. We claim the 
benefit of the act of 1819, which expressly gives a bill in equity, and 
the Circuit Court jurisdiction. 

It is in vain to say that the acts in question are conditions precedent 
to the right. The right itself is recognised by the constitution and 
law as an existing right, and the right is not given by the act, but is 
only secured by it. The security, as we have shown, are the penalties 
and forfeitures which we do not now claim. The action on the case 
is a remedy founded on the right, and not on the statute which gives 
none. And this bill is founded on the right, and on the act of 1819. 
We, therefore, get neither the right nor remedy from the act of 1790, 
and what benefit do we claim from it ? 



63 

That this is the correct view, and that the penalties are merely ac- 
cumulative, see Beckford v. Hood, 7 Term R. 616. 

See, also, 1 CamphelVs R. 98, where the court held that the name 
and date on engravings were not conditions precedent, although the 
act (8 Geo. II.) declared that a person should have the "sole right to 
commence from the day of the first publishing thereof, which shall be 
truly engraved with the name of the proprietor," &c. This was, at 
hast, as much a condition precedent as in our case. 

I repeat, the object and purpose of these acts of Congress, is to se» 
cure the rights of authors, and they should be construed so as to ad- 
vance the remedy and prevent piracy. But the construction contend- 
ed for, would defeat the purpose of the act, and facilitate piracy. 
The object of Congress was, to secure the author, and not the good of 
the public. But on this construction, the author's security has been 
forgotten in pursuit of something else. 

Rules of construction applicable to this point : 
" Words and phrases, the meaning of which, in a statute, has been 
ascertained, are, when used in a subsequent statute, to be understood 
in the same sense." {6 Bac. Abridgment, 319. Statute I. pi. I.) 

" The best construction of a statute, is to construe it as near to 
the rule and reason of the common law as may be, and by the 
course which that observes in other cases." (lb. 383. pi. 4.) 

" In all doubtful matters, statutes are to receive such a con- 
struction as may be agreeable to the rules of the common law." {lb.) 
" A thing which is within the letter of a statute, is not within the 
statute, unless it be within the intention of the makers." (76. pi. 5.) 

" A statute ought sometimes to have such equitable construction, 
as is contrary to the letter." {lb. 387. pi. 6.) Under this rule. Bacon 
places the registry acts, the statute of enrolments, and statute of 
frauds. 

" If the meaning of a statute be doubtful, the consequences are to 
be considered in the construction." {lb. 391. pi. 10.) 

" If laws and statutes seem contrary to one another, yet if by in» 
terpretation, they may stand together, they shall stand," (19 Viner's 
Abridgment^dld. Statute E. 6. pi, 86.) 

" Every statute which is penal, and goes in derogation of the com. 
mon law, shall be taken strictly, and a penal statute is such as gives 
forfeituie of money or costs." (19 Vmer''s Abridgment, 520, pi, 96, 
Jb. 525. pi. 129.) 

" Though the words of an act are general, yet they ought to be 
specially construed to avoid an apparent injury." (/6. 524, pi. 119, 
lb. 528. pi. 156.) 
" If a condition be performed in substance, it is good, although it 



64 

differs in words." (5 Vmer's Abridgment, 142. Condition 2. a. pL 2, 
3, 4, 5.) 

" Judges have power over statute laws, to mould them to the 
truest and best use, according to reason and best convenience." (19' 
Viner^s Abridgment, 528. pi. 154. 158.) 

It would seem remarkable, that when the law abounds with so 
many rules for construing statutes, Mr. J. Washington should not 
have recurred to them in a case where they are so clearly applicable. 

It is agreed on all hands, that the only object of these requisites is 
to give notice ; and statutes, however strong their language, or posi- 
tive their enactments, which require things to be done for notice, 
are held not to apply, and that their provisions need not be complied 
with, where actual notice is proved. 

Such are the registry acts, and other similar acts which declare 
that instruments shall be absolutely void, if not recorded. (See Le 
Neve V. Le Neve, 3 AtJcyn^s Reports, 651. JacJeso?i ex. dem. v. Bur- 
gott, 10 Johns. Reports, 460. Jackson ex. dem. v. West, 10 Johns, 
Reports, 466.) 

His honour who decided the cause below, censures this interpreta- 
tion of the registry and similar acts, and says the profession will join 
him. I never before heard it censured. He says the courts have 
dispensed with the " permanent, immutable" evidence provided by 
law in these cases, and have admitted " floating, fallible,-and tran- 
sitory" evidence. Such is all human testimony. Courts must admit 
such evidence or none. The object of the registry acts was not to 
provide any different or better evidence, as he supposes. It was to 
give notice, simply, to bona fide purchasers. Notice is all such a 
purchaser can want or be entitled to. And is it important whether 
it is just such as the statute points out, so long as it is notice ? Is it 
important that he should have notice by the record in the clerk's 
office, notice by publication in the newspapers, notice by the imprint 
on the title-page, and notice at the secretary of state's office. And 
if he does not get all these kinds of notice together, can he say, 
I pirated your work as I had a right to do, because I had not notice? 
And if he has every one of the other three kinds of notice, except 
that at the secretary of state's office, can he say, the notice I have 
had is insufficient ; it is " floating, transitory, and fallible" evidence, 
the record, and the imprint, and publication together. I am an 
" ignorant and innocent invader." 1 have got " innocently into 
trouble, and it may be ruin V 

No. The principle of those acts is, that being made to prevent 
fraud, they shall not be construed to promote fraud. And the prin- 



65 

ciple of this act should be, that being made to secure an author's 
rights and prevent piracy, it shall not be made to promote piracy. 

The truth is, that these requisites of a statute ought not to be con- 
strued, as conditions precedent are in contracts and deeds. There, 
they are the considerations of a grant, a purchase, or a promise, and 
the title does not vest until the condition is performed. But in these 
statutes, they have nothing to do with the cause, ground, or consider- 
ation of acquiring the interest. The only person who can have any 
interest in their performance, is the person who wants notice. And 
if he has notice otherwise, he has no interest in their performance. 
So far as they are conditions precedent, they are substantially com- 
plied with, if the person wanting notice, has notice. And a literal 
performance of a condition precedent is not necessary ; a substantial 
performance is suflicient. (5 Viner^s Abridgment, 142, Condition Q. 
a. pi. 2, 3, 4, 5.) 

Is it necessary to show that the defendants have had notice ? We 
have proved the record, we have proved the imprint, we have proved 
the publication. — In exhibits A and B attached to the bill, Mr. Peters 
admits the claim made by Mr. Wheaton, and says he is threatened 
with a prosecution. He also admits that all the requisites had been 
complied with, except the delivery of the copy to the secretary of 
state — and insists that the omission to do this is fatal. See also 
Donaldson's letter to Peters. 

The rule is, that the provisions of the registry acts do not apply, 
except in cases of bona fide purchasers. What is a bona fide pur- 
chaser ? A purchaser without notice ; no matter what his property, 
or his attempt to get it has cost him. Is Mr. Peters a bona fide pur- 
chaser ? 

Shall it be said, that a rule adopted first by courts of equity, and 
afterwards approved and adopted by courts of law ; a rule which 
was never complained of, and which recommends itself to the rea- 
son and justice of ail, shall not be applied to all cases which come 
within its spirit ? That what is law for one shall not be law for 
another ? 

The title to real estate is hidden and secret, without registry. 
Real estate has no indicia of ownership. Yet the courts say, actual 
notice shall dispense with statutory notice. The title to a book can- 
not be secret. A man might as vv'ell justify himself for picking up a 
pocket book and appropriating it to himself, because he did not 
know whom it belonged to, as for piVating a book because he did not 
know its author. The presumption is, it has an owner, and inquiry 
would infallibly lead to finding him out. Still harder is it, to require 
the fourth kind of statutory notice to be given, when three kinds 



66 

have already been given. It is requiring not only the pound of flesh, 
but the blood. That cannot be in the bond. 

" Judges have power over statutes to mould them to the truest and 
best use, according to reason and best convenience." Because the 
legislature is supreme and its power irresistible, we are not to infer, 
that its enactments are made in the spirit of despotism, or require 
from us a blind and unquestioning obedience ; we are rather to re- 
gard them, as coming from those who have the power to do any 
thing, but the will only to do good. 

The court have seen, that in Donaldson v. Becket, there were six 
judges to five against the author's perpetual right, (Lord Mansfield 
not voting.) But Eyre, J., one of the majority against the author, 
took one ground with the other side, directly applicable to our case. 
He held, " that there may be a remedy in equity upon the foundation 
of the statute, independent of the terms and conditions prescribed by 
the statute, in respect of penalties enacted thereby." (4 Burr. R. 
2409.) 

It is objected, that the record of some volumes is taken out as au- 
thor and proprietor. In answer we say, it is the clerk's duty to make 
out the record, and we cannot be held to forfeit our property because 
he has not done it correct!}'. 

But the record is right. As author, and not having parted with his 
right, Mr. Wheaton was also proprietor. The act is adapted to a 
proprietor as well as an author, and to enable a proprietor who is not 
the author, to secure a copy-right. In our case, Mr. Wheaton is de- 
scribed as author, and the superaddition of proprietor is mere sur- 
plusage. 



VI. The directions of the acts of Congress, as to the publication 
of the record and delivery of the copy to the secretary of state, and 
the renewal of the right to the first volume, have been complied 
with, and the complainants have offered all the proof they are bound 
to, of those facts. 

Files of newspapers containing the publication of notices of 1st, 
2d, and 9th volumes could not be found. 

As to the delivery of the copies to the secretary of state : 
The law is silent as to any proof It directs no record or memo- 
randum of the deposit to be made. The presumption, therefore, 
is, that none is made. And in fact, they did not begin to make any, 
until about the close of these volumes, as Mr. Carey proves. 



6? 

It appears that certificates were given sometimes latterly. But the 
law does not direct them, does not know them ; and why should 
one take them ? Would they be evidence of any thing if he had 
them ? And Mr. Brent proves the greatest irregularity as regards 
certificates and memoranda. Mr. Carey proves the same thing. 

But the law does say, that the secretary of state shall preserve the 
copies in his office. This then is the evidence required by law — that 
the volumes have always been in his office, since within six months 
of their publication. And this is proved by Mr. Brent's deposition. 
The volumes are, and have been there. It is for them to show that 
they were not placed there by us, under the law. 

How can we prove by parol, facts which occurred from sixteen to 
seven years before the proof taken in this cause ? The proof must 
be by parol, and such proof the law presumes to be out of men's 
power, after the lapse of six years. Without the copies having 
actually been found there, the law would presume that an act en- 
joined by law to be performed, was performed, after such a lapse of 
time. It would presume it, in favour of right and natural justice 
against a wrong-doer — omnia presumuntur in odium spoliatoris. 

See case of presumption even of the enrolment of articles of 
apprenticeship, against positive evidence to the contrary. (The 
King V. The Inhabitants of Long Buckley, 7 East. 45.) 

But we have proved positively, by the evidence of Mr. Brent, that 
eighty copies of every volume were delivered under the reporter's 
salary act, within the six months after publication. 

The four acts of Congress, allowing the reporter his salary, also 
provide that he shall, within six months, deliver eighty copies to the 
secretary of state, one of which he is to keep and transmit to his 
successor in office — of course to be preserved in the office. 

The fact is, that eighty-one copies were sent, but the law giving 
the salary, not requiring more than eighty, the papers in the depart- 
ment under these acts speak of but eighty ; and all being sent to the 
department together, is the reason why there was no minute, or 
memorandum, or certificate, as in some cases under the copy-right 
law. 

And is not this, within the letter of the copy-right law, the delivery 
of the eighty copies alone 1 And if we have complied with the 
letter of the law, ought it not to save us from a forfeiture of our 
property ? 

Is it not within the spirit of the law ? The judge in the court 
below insists the volume is for notice ; the counsel insist it is for 
notice. And is it not as good notice if it is there under one law, as 
under the other ? 

But the judge, who decided the case below, says, that it is not re- 



68 

quired under the salary law to be kept in the office. It is submitted 
that it is as much required to be kept there under one law as the 
other. 

At all events, the condition, if it be a condition precedent, is sub- 
stantially performed by it ; and this, as we have seen, is sufficient* 

When Mr. Peters commenced his depredations upon Mr. Whea-' 
ton's property, his zeal in his new vocation hurried him into at least 
one mistake. He supposed that the right to the first volume had not 
been renewed, because it was not done by Mr. Carey. Where one 
enters a devious and untrodden path, he should not be too secure that 
every step is a safe one. Mr. Wheaton sold Carey the right to pub- 
lish only one edition of one thousand volumes. Carey had never any 
right to the second term, nor even the first, and had parted with all 
his interest long before the first term expired. Mr. Wheaton had the 
right of renewal, and did regularly renew the term. He did not re* 
new it in Pennsylvania, where Carey first secured it, because he did 
not live in Pennsylvania. He renewed it in New-York, his place of 
residence, because the act requires the title to be deposited, and the 
record made in " the clerk's office of the district court where the 
author shall reside." (Act of 1790. s. 3.) 

Vn. Law reports, like other books, are objects of literary property 5 
and Mr. Wheaton was the atttlior of the reports in question in this 
case, and entitled to the copy in them. The other complainant, Mr. 
Donaldson, has a limited property in the copy, by assignment from 
Mr. Wheaton. 

There never was a doubt in England that law reports were the sub- 
ject of copy-right. The only question was, whether the prerogative 
of the crown did not monopolize all law books so as to exclude an 
author's rights. 

This is clear from the oldest reported case on copy-right. (Roper 
v. Streater, Shin. Reports, 234. 4 Burrow, 2316. 2401. 2403.) 
There, to an action by the purchaser of Crooke's Reports, (from 
Crooke's executors,) a patent from the king was pleaded. But why 
plead a patent from the king, unless Crooke would otherwise have 
had the right ? Crooke, if the property was common, could have 
had no right of action, and the defendant would not have been put 
upon his defence. Justice Willes says of the judgment in this case, 
which was for the plaintiff, " This is a judicial authority in point that 
the plaintiff, by purchase from the executors of the author, was owner 
of the copy at common law." (4 Burrow, 2316.) 



69 

In Tonson v. Walker, (3 Swanstov, 673.) the case of Forrister v. 
Walker, is cited in the following words : 

" A bill was brought by the author of notes of cases in Lord Tal- 
bot's time, to enjoin the printing ; this being a law report, was not 
within the act, and could not be published without the license of the 
patentee ; yet an injunction was granted and acquiesced under." 

In Butterworth v. Robinson, (5 Ves. R. 709.) an injunction was 
granted to restrain an abridgment of law reports, among which was 
" Term Reports," of which the complainant was proprietor. No 
question was made, or doubt expressed, as to copy-right in law re- 
ports. 

Nor in all the cases in England down to this day, was an author's 
right in law reports ever denied or doubted, except that the king's pre- 
rogative interfered with it. 

The prerogative right, however, is now abandoned, and has long 
been, in England. Maugham, 101, says, "it is now treated as per- 
fectly ridiculous." Godson says the same thing, (Patents, 322-3.) 
See 4 Burrows, 2415-16, as to the reason of the prerogative. It 
there appears the king mtroduced printing into England. 

In 2 Br. Pari. Cases, 138, several cases are cited of injunctions 
against abridging law books. 

It is not necessary, howevejr, to adduce cases to prove a right so 
obvious, until cases are produced or principles established, which 
show that it does not exist. There are necessarily but few cases, be- 
cause the right has not been questioned. One fact is enough without 
cases. We know the great price of law reports in England, and we 
know, of course, that but one person does publish, viz. the proprietor. 
That there are never cotemporaneous editions of the same reports. 
That a single whole edition is exhausted before another is published, 
and sometimes lasts half a century. Why is this? What prevents 
enterprise and cupidity from participating in this field ? What can it 
be except the copy-right ? 

As to the objection that the matter of which the report is com- 
posed is not original, we answer, this is wholly unnecessary in copy- 
right. There is no analogy in that respect between copy-rights and 
patents. A man who makes an Encyclopedia may have a copy-right, 
although he does not write a word of it. And in Carey v. Kearsley, 
(4 Esp. R. 168.) where it was attempted to show that the survey, in 
which the copy-right was claimed, was made at the expense of the 
post-office, and that the copy-right belonged to the post-office. Lord 
Eilenborough said, " I do not know that that will protect the defend- 
ant. At law, the first publisher, even though he has abused his trust 
by procuring the copy, has a right to it, and to an action against the 
person who publishes it without authority from him." 
9 



70 

The salary of the reporter was never designed to be a compensation 
in full, and to deprive him of his copy-right. Had such an effect beere 
intended or thought of, it would have be enexpressed. The act stipu- 
lates an equivalent for the sum allowed him, or a greater part of it^ 
viz. the eighty copies. The mind of Congress was called directly to 
the subject when the last act was passed, and he is there required to 
put the price at five dollars — Why ? No doubt because the copy- 
right was considered his. Here Congress could have said that the 
salary was an equivalent for his copy-right. Is it not clear that they 
did not design to take it from him ? 

Mr. Wheaton published his first volume without a salary. He had 
been appointed reporter by the court, and was looking to the profits 
of the copy as his only compensation. But it was found unequal to 
the labour and time, and in truth no compensation. In this state of 
things, to enable him to go on, Congress give him 1,000 dollars, (for 
which he gives them back eighty copies,) and say nothing of its being 
an equivalent for his copy-right. The copy-right was established in 
England and this country before the law was passed. And is es- 
tablished property to be taken away by implication ? Does any one 
believe that Mr. Wheaton would have spent half a year or more in 
making and publishing these reports, if he had supposed he had not 
the copy-right ? After deducting the eighty copies, the thousand 
dollars would not leave enough to pay the expenses of a gentleman 
in Washington during the term and going and coming. Besides, he 
took steps to secure his copy-right every year. It was considered a 
copy-right book. Congress saw this, and knew it. Their laws with 
him were contracts made under a full knowledge of existing facts. 
And shall it be said, when they made no exception of the copy-right, 
and knew that he relied on it, that they intended to deprive him of it ? 
It would have been a fraud unworthy of Congress, as it would have 
been disgraceful in an individual. 'Other reporters in this country, in 
the state courts, who had salaries, had always secured their copy- 
right. (Even Mr. Peters has secured his.) And the right to do so 
was never doubted. 

Mr. Wheaton published the first volume without salary. Conse- 
quently this objection cannot apply to that. 

As to the cases and abstracts, they are clearly Mr. Wheaton's own 
composition. He acquired the right to the opinions by the judges' 
gift. They invited him to attend at his own expense and report the 
cases, and there was at least a tacit engagement on their part to fur- 
nish him with such notes or written opinions as they might draw up. 
This needs no proof. It is the course of things, and is always done. 
The mere appointment proves all this. Was this engagement, thjs 
understanding, ever altered ? Do not the judges of this court know 



71 

that Mr. Wheaton believed he was acquiring a property in his re. 
ports ? Did they not suppose he would be entitled to it if he took the 
necessary steps to secure it ? 

Were not the opinions of the judges their own to give away ? Are 
opinions matter of record, as Mr. Peters pretends ?1 Was such a thing 
ever heard of? They cannot be matters of record in the usual sense 
of the term. Record is a word of determinate signification, and there 
is no law or custom to put opinions upon record, in the proper sense 
of that term. Nor were they ever put on record in this case. 
They were given to Mr. Wheaton in the first instance. Blackstone 
(1 Com. 71-2.) shows that the reasons of the court are not matter of 
record. 

The copy in the opinions, as they were new, original, and unpub- 
lished, must have belonged to some one. If to the judges, they gave 
it to Mr. Wheaton. That it did belong to them is evident, because 
they are bound by no law or custom to write out such elaborate 
opinions. They would have discharged their duty by delivering oral 
opinions. What right then can the public claim to the manuscript ? 
The reporter's duty is to write or take down the opinions. If the 
court choose to aid him by giving him theirs, can any one complain ? 

But we allege and prove that Mr. Wheaton was the author of the 
reports ; that he published them. This is enough to entitle him to a 
copy-right, until they prove that he is not. The burden of proof is 
on them. (See Carey v. Kearsley, 4 Esp. R. 168, already cited.) 

It is contended that it is against public policy to allow reports to be 
copy-righted. And extravagant suppositions are made, as that an 
author might destroy them, or never publish them, or put an unrea- 
sonable price on them. 

Is on« to be divested of property, is a common rule of law to be 
overthrown, because the imagination of man can devise a danger 
which may arise, however improbable 1 And besides, in this case 
the reporter would lose his salary, and in all cases he must lose his 
place, if he were guilty of any of the absurdities conjured up by the 
imaginations of the defendants. 

As to enhancing the price, which is one of the evils apprehended, 
if the author were to do it unreasonably, he would lose his place, and 
he must always do it to his own injury, for he would lose his sales 
and profit. In England, the statute of 54 Geo. III., amending the 
statute of Anne, omits the provision in the statute of Anne intended to 
prevent too high a price. This shows that experience had proved 
that no such evil was to be apprehended. In Germany, where a free, 
perpetual copy-right exists, books are cheaper than anywhere else ■ 
in the world. (Maugham, Int. 14-15.) 



72 , ^ 

Congress had power to apply the remedy, and they did apply it, 
when they thought proper, by fixing the price. 

It is attempted to put judicial decisions on the same ground as 
statutes.. It is the duty of legislators to promulgate their laws. It 
would be absurd for a legislature to claim the copy-right, and no one 
else can do it, for they are the authors, and cause them to be pub- 
lished without copy-right. Statutes never were copy-righted. Re- 
ports always have beefn. 

It is said that one employed by Congress to revise and publish the 
statutes might as well claim a copy-right, as a reporter. The differ- 
ence is, one is employed to act as a mere agent or servant, or clerk 
of the legislature, to prepare the laws to be properly promulgated. 
He is engaged to do, what it is well understood never is copy-righted, 
and does not admit of copy-right. There is a distinct understand- 
ing, a contract, that he is to do the work for his compen'satioii, and 
not to claim a copy-right. But a reporter is not an agent employed 
by Congress. He is, and is understood to be, engaged for himself as 
principal, and Congress buy eighty copies, and add a salary to his. 
profit from his copy. He was doing before the act what it was un- 
derstood he could copy-right, and what he did copy-right ; and the 
act does not intimate that there was to be any change ; and he went 
on copy-righting, and they renewed his salary without any objection 
or stipulation. 

It is the boundfen duty of government to promulgate its statutes in 
prints and they always do it. It is not considered a duty of govern- 
ment to report the decisions of court's, and they therefore do not do 
it. The oral pronunciation of the judgments of courts is considered 
sufficient. Congress never employed a reporter, and they never gave 
any one any compensation until Mr. Wheaton. Mr. Cranch report- 
ed without compensation, and- relied upon his copy-right, and Mr. 
Wheaton continued with a full understanding that he was to report 
in the same way. 

Are the court prepared to deprive all the authors of reports in this 
country of their copy-rights? of property which they have laboured 
to acquire, with the full belief of all others as well as pf themselves, 
that they were to be legally entitled to it ? 

VIII. The publication of the defendants is a violation of the com- 
plainants' rights. . 

The quo animo is important. Mr. Peters did not contemplate an 
abridgment, or intend to make one. He says so in his proposals 
annexed to the bill. 



73 

He declares his intention to supply the public with the work at less 
cost. 

His answer admits that the decisions contained in third Con- 
densed Reports, had been previously published in Wheaton's Reports, 
and that he iiitends to continue the publication on the same plan. 

In all these papers he denies -that Mr. Wheaton could have any 
right, and if he could, that he has taken the necessary steps to 
secure it. It is not to be supposed, that with these impresgions, he 
would publish, with any reference to a right believed not to exist, or 
that he would make what, with reference to an author's rights, is 
termed a fair abridgment. 

The actual violation of the complainants'' rights consists in having 
first, and worst of all, pirated the abstracts made by Mr. Wheaton, 
which Mr. Peters, in his answer, pretends are made by himself. 

Secondly, in having taken the statement of the cases made by Mr. 
Wheaton, (and which he, Mr. Peters, perhaps could not have made 
for the want of materials,) verbatim from Wheaton's Reports. 

Thirdly, in having taken points and authorities, and in some in- 
stances arguments, and in all cases oral opinions, from Wheaton's 
Reports, and which, of course, he could find no materials for else- 
where. 

Fourthly, in having pirated the whole of the opinions, which he 
does notpretepd to have found any where else. 

One of his pretensions is, that the rriatter of the statement of the 
cases is contained in the records, and that therefore- it cannot be 
copy-righted. He would lead us to infer from this, that he has him- 
' self resorted to the records, and made the cases from those materials. 
The contrary^ is. the truth. He has, while claiming a right to the 
privilege of working for himself, even here availed himself of Mr. 
Wheaton's labours, and taken the Statement of his cases verbatim 
from those of Mr. Wheaton. 

. It will hardly be pretended that this is a fair abridgment. In Bul- 
terworth v. Robinson, (5 Ves. jr. 7.09.) an abridgment of several 
reports was in question. It was charged, that with others, it con- 
tained " Tern\ Reports," colourably leaving out some parts of the 
cases, such as arguments of counsel ; and the chronological order of 
the original work being artfully changed to an alphabetical arrange- 
ment under heads and titles, to give it the appearance of a new 
work." The Lord Chancellor said, " I have looked at one or two 
cases with which' I am pretty well acquainted, and it appears to me 
an extremely illiberal publication. Take the injunction," &c. 
, For other cases, see a digest of them in 1 American Jurist, 157, 
and Maugham, 129 to 136. 



74 
Mr. Sergeant and Mr. Ingersoll for the defendants.* 

I. The book styled Wheaton's Reports, is not lawfully the subject 
of exclusive literary property. 

The character of the work in which the right to literary property 
is asserted by the complainants, is sufficiently described in their own 
bill. It consists, they say, of twelve books of reports of the de- 
cisions of the Supreme Court of the United States. It was prepared 
in the due exercise of the appointment of Mr. Wheaton as reporter, 
which he derived from the court. The writings, or memoranda of 
the decisions, were furnished by the judges to Mr. Wheaton, who alone 
preserved the notes and opinions thus furnished to him, together with 
other materials compiled by himself; and having retained all these 
materials in his possession exclusively, he finally destroyed them. 
The work, agreeably to the description of it in the bill, is composed 
of "cases, arguments and decisions." However rich it may be in' 
other materials, they are not made the subject of claim ; nor is any 
interference with them alleged, or made in any degree the subject of 
complaint. The claim and complaint are confined to the reports 
properly so called. If the profession and the country are indebted 
to the individual exertions of the reporter for valuable notes, which 
may have been usefully inserted to increase his emoluments, or en- 
large his literary reputation, they are not at all connected with the 
work, as described and exclusively claimed in the proceedings before 
the court. 

Reports are the means by which judicial determinations are dis- 
seminated, or rather they constitute the very dissemination itself. 
This is implied by their name ; and it would necessarily be their na- 
ture and essence, by whatever name they might be called. The 
matter which they disseminate is, without a figure, the law of the land. 
Not indeed the actual productions of the legislature. Those are 
the rules which govern the actions of the citizen. But they are con- 
stantly in want of interpretation, and that is afforded by the judge. 
He is the '■'■lex loquens.'''' His explanations of what is written are 
often more important than the mere naked written law itself. His 
expressions of the customary law, of that which finds no place upon 
the statute book, and is correctly known only through the medium 
of reports, are indispensable to the proper regulation of conduct in 
many of the most important transactions of civilized life. Accord- 
ingly, in all countries that are subject to the sovereignty of the laws, 



* It is regretted that it is impossible to furnish Mr. Sergeant's argument. — The above 
is the copy of a printed argument, by Mr. Ingersoll, read at the hearing. 



75 

it is held that their promulgation is as essential as their existence. 
Both descriptions of laws are within the principle. The source from 
which they spring makes no difference. Whether legislative acts, or 
judicial constructions or decrees, knowledge of them is essential to 
the safety of all. A pregnant source of jurisdiction to the enlighten- 
ed tribunal to which this case is now submitted, is altogether foreign 
to the enactments of the legislature. The extended principles of 
national law, and the rules which govern the maritime intercourse of 
individuals, are fairly and authoritatively known, only as they are 
promulgated from this bench. It is therefore the true policy, influ- 
enced by the essential spirit of the government, that laws of every 
description should be universally diffused. To fetter or restrain their 
dissemination, must be to counteract this policy. To limit, or even 
to regulate it, would, in fact, produce the same effect. Nothing can 
be done, consistently with our free institutions, except to encourage 
and promote it. Every thing which the legislature or the court has 
done upon the subject, is purely of that character and tendency. 

The defendants contend, that to make " reports" the subject of 
exclusive ownership, would be directly to interfere with these fun- 
damental principles and usages. They believe that no man can be 
^the exclusive proprietor of the decisions of courts, or the enactments 
of the legislature ; and that nothing in the light of property in either 
can be infringed. 

The two things being analogous, let the illustration of the one in 
controversy be derived from the one that is not. That a particular 
act of Congress, or any number of acts of Congress, could be made 
any man's exclusive property, has perhaps never been supposed. 
Yet the same labour is devoted to the construction of them — the 
same degree of talents is required for the due and proper composi- 
tion of them. A particular individual receives them for publication, 
and the manuscripts may be said to belong to him ; for, " having 
retained such materials in his possession exclusively," as long as he 
had occasion for them, in every case it may probably be said, " he 
finally destroyed the same." This person is specially employed to 
publish the acts of Congress. He does so under an ajjpointment, 
which has been deemed by some learned judges incompatible with 
the tenure of an office under one of the states. Where, then, does 
the parallel end? An individual may voluntarily publish an edition 
of the laws. But he does not by such publication make the laws 
his own. It is not necessary to determine whether he has or has 
not exclusive property in the peculiar combination, or in the addi- 
tional matter which his edition may contain. He certainly does not, 
by either combination or addition, appropriate to himself that which 
is neither the one nor the other; and his combination being un- 



76 

touched, and his additions discarded, a stranger may surely use as 
he pleases that which at first was public property, and is public pro- 
perty still. Those acts themselves are no more the property of the 
editors, than the hall in which they were enacted is the property of 
the members who passed the laws. 

If either statutes or decisions could be made private property, it 
would be in the power of an individual to shutout the light by which 
we guide our actions. If there be any effect derived from the asser- 
tion that the judges furnished their decisions to the reporter, the gift 
would be both irrevocable and uncontrollable even by the judges 
themselves. The desires of the court to benefit the public, and the 
wishes and necessities of the public to receive the benefit, might 
alike be frustrated by a perverse or parsimonious spirit. A particular 
case, or a whole series of cases, might be suppressed by a reporter 
endowed with different feelings from those of the highly respectable 
complainant in this cause. It might become the interest of such a 
person to consign the whole edition to the flames, or to put it at in- 
accessible prices, or to suffer it to go out of print before the country 
or the profession is half supplied. These are evils incident to every 
publication which can be secured by copy-right. Mere individual 
works, whether literary or religious, the authors can undoubtedly 
thus control. During the " limited time," for which they are consti- 
tutionally secured in an exclusive enjoyment of them, there is no 
remedy. Their right is perfect during that period. A similar right 
must exist, if at all, in the publisher of reports. Can such a power 
be asserted, with all its consequences, over the decisions of the high- 
est judicial tribunal of the land ? 

We are not to be told, that the interest of the proprietor would 
secure the country against so great an evil. The law endeavours to 
prevent the occurrence of any possible wrong, although it may not 
anticipate the precise mode of accomplishing it. But there are con- 
tint^encies readily conceivable when the interest of a venal reporter 
might be promoted by the course suggested. A party might feel it 
to his own advantage, and therefore make it to the advantage of the 
reporter, to suppress a part, or the whole of the edition of his work. 
The law cannot, and ought not to be made the prisoner or the slave 
of any individual. 

It is proper here to draw a distinction between reports, the imme- 
diate emanations from the sources of judicial authority, and mere 
individual dissertations, or treatises, or even compilations. These 
may be of great utility, but they are not the law. Exclude or destroy 
them, and the law, and the knowledge of it still exists. The same 
fountains from which the authors of them drew, are accessible to 
others. These private works may be regarded as so many by-paths 



77 

to the temple of justice, smoothed and straightened by individual 
labour, and laid out, for greater convenience, over private ground. 
The owner may close them at his pleasure, and no one can complain. 
But the entrance to the great temple itself, and the highway that leads 
to it, cannot be shut without tyranny and oppression. It is not in the 
power of any department of the government to obstruct it. 

The reports in England used to be printed with the express permis- 
sion or allowance of the twelve judges prefixed. Probably it would 
have been held a contempt of court to print them without. We are 
told, that four reporters were formerly appointed by the king, "to com- 
mit to writing, and truly to deliver, as well the words spoken as the 
judgments and reasons thereupon given," in the courts of Westmin- 
ster. {Preface to 3 Croke^s Reports.) When Sergeant Hendon 
vouched for authority Dalison's printed reports. Sir Henry Hobert 
" demanded of him by what warrant those reports of Dalison's came 
in print." (/6.) 

Sir James Burrow rebelled against the habit of receiving a special 
allowance or recommendation from the judges, preparatory to publi- 
cation, and actually published without any allocator. His preface, 
which explains all this, also has a reference to the property of the re- 
porter, (p. viii.) But that has, evidently, no allusion to copy-right 
property, for it refers to a proceeding previous to the publication by 
the reporter : viz. a surreptitious publication by some other person, 
" and after the surreptitious edition has been stopped by an injunction, 
the book has been published, with consent of the reporter, without 
leave or license, and no notice taken or complaint made of it." 

Reporting, however, in England, as it respects the common law 
courts at least, is a very different thing from reporting in this country. 
There, the reporter has, with regard to the decisions themselves, a 
labour to perform which requires experience, talents, industry, and 
learning: and he receives nothing from the judges to aid him in his 
task. Here, (with respect to the opinions,) he does nothing more 
than transcribe, if he does so much. And having received the 
manuscript from the judges, if he should not himself publish them, 
they are withheld from the public, to the infinite detriment of the 
whole nation. 

The cases that have been decided in England, have, as it should 
seem, turned on a question of prerogative, and not of copy-right. 

Such was the point in the Company of Stationers v. Seymour, (I 
Mod. 256.) " Matters of state, and things that concern the govern- 
ment, were never left to any man's liberty to print that would. And 
particularly, the sole printing of law books, has been formerly granted 
in other reigns." 

The case in 1 Vern, 120. (anonymous,) was a motion by the hinges 
10 



patentees for an injunction to stop the sale of English Bibles printeeJ 
beyond sea. The lord keeper then referred to the circumstance, 
that a patent to print law books had been adjudged good in the 
House of Lords. 

In the case of Company of Stationers and Parker, (Skinner 233.) 
Holt, (arg.) "Agreed that the king had power to grant the printing of 
books concerning religion or law, and admits it to be an interest, but 
not a sole interest." The court inclined for the defendant, (who had 
the letters patent of the king, which granted to the university of Ox- 
ford to print omnes et omni modes libros, which are not prohibited to 
be printed, &c.,) and they said, that this is a prerogative of power 
which the king could not grant so, but that he might resume it, but 
otherwise it is of a grant of an interest." 

In Gurney v. Longman, (5. Ves. 506-7.) Lord Erskine declared 
that he granted the injunction (as to publishing the Trial of Lord 
Melville,) " not upon any thing like literary property, but upon this 
only, that these plaintiffs are in the same situation as to this particular 
subject, as the king's printer exercising the right of the crown as to 
the prerogative copies." 

The cases of Bell v. Walker, (IBro. C. C. 451.) and Butterwortk 
V. Robinson, (5 Ves. 709.) are not sufficiently developed, to show 
whether they turned upon copy-right proprietorship, or a proprietor- 
ship derived from a prerogative grant. 

It cannot be contended with any semblance of justice, that the 
mere opinions of the judges, communicated to Mr. Wheaton, as it is 
alleged they were, could be the subject of literary property. A book 
composed in part of those opinions, and in part of other matters, 
does not change the nature of the opinions themselves. An indivi- 
dual who thus mingles what cannot be exclusively enjoyed, with what 
can, does upon familiar principles, rather forfeit the power over his 
own peculiar work, than throw the chain around that which is of 
itself as free as air. The intermixture, if it affect either description 
of materials, must render the whole insusceptible of exclusive owner- 
ship. That which is public cannot in its nature be made private, 
but not e contra. The lucubrations of the reporter assume the hue 
of the authoritative parts of his book, and must abide by the result 
of a connexion so framed, and a colour so worn. Whether a stranger 
could extract the original parts in the face of a copy-right, and pub- 
lish them alone, it is not necessary to discuss. But upon the prin- 
ciples just asserted, he could give additional dissemination to the 
whole as he finds it connected together. And he could, it is con- 
ceived, unquestionably select what is justly public property, and 
leaving the merely private work of the reportej: untouched, publish, 
the rest with entire impunity. 



79 

II. The exclusive ownership of an author can be obtained only by 
pursuing the provisions of the acts of Congress. 

Upon this particular point a moment's attention will be usefully 
given to the celebrated case oi Millar v. Taylor, {4: Burr. 2303.) and 
its companion, Donaldson v. Becket, (lb. 2-108.) 

Judgment of the court of king's bench having been entered for the 
plaintiff, in Millar v. Taylor, a decree of the court of chancery wag 
•founded upon, it in the case of Donaldson v. Becket and others. This 
came before the house of lords on an appeal, and the decree of the 
•court of chancery (and of course, Millar v. Taylor along with it in 
principle) was reversed, " the lord chancellor seconding Lord Cam- 
den's motion to reverse." Besides the influence of the decision it- 
self, we have the force of these professional opinions, and that of a 
Tnajority of the eleven judges, who gave their sentiments, that the 
■existence of the statute deprived the author of any right of action 
which he may have had at the common law. 

The question of a common law right has not been decided 
favourably to the author; and if it had been, the existence of a 
statute is thus recognised as superseding both the right and the 
remedy which may have previously existed. The marginal note of 
Sir James Burrow to Millar v. Taijlor, {lb. 2303.) itself is, " authors 
have not by common law the sole and exclusive copy-right in them- 
selves or their assigns, in perpetuity, after having printed and pub- 
lished their compositions," &c. If in England, the source and 
fountain of the common law, no such right exists, what can be 
alleged in favour of its existence in these United StatesT We con- 
tend that there could be no such common law right here, even if 
there were no statute : and that if there could be, there is incom- 
patible with the provisions of the statute. 

All the arguments contained in the powerful and splendid opinion 
of Mr. Justice Yates, in Millar v. Taylor, (2 Burr. 2354.) are of irre- 
sistible force here. 

Feudal principles apply to real estate. The notions of personal 
property of the common law, which is founded on natural law, de- 
pend materially on possession, and that of an adverse character, ex- 
clusive in its nature and pretensions. Throw it out for public use, 
and how can you limit or define that use ? How can you attach 
possession to it at all, except of a subtle or imaginative character? 
If you may read, you may print. The possession is not more abso- 
lute and entire in the one case than the other. It is an artificial, and 
therefore arbitrary rule which draws the distinction ; and in order to 
render it available, the lesson must be read in the statute, and the 
means must be resorted to which are there pointed out. Even in the 



80 

face of a statute, backed by the constitution itself, let an inventoJ' 
lose his possession, and his privilege is gone. The decision of this 
court, as to the patent for fire-hose, was to this effect. {Pennock v. 
Dialogue,^ Peters, 1.) 

If the right secured by statute does not enable the owner to re* 
claim his lost possession, even when aided by the commoti law, (if it 
be so,) how can the common law, independently of all statutes, avail ? 

Analogous rights, if such they may be called, are nothing without 
actual possession and use. Light and air, and a part of the great 
ocean, may be claimed and held, as long as necessary for the occu- 
pant ; but abandon the immediate occupation, and the exclusive 
power and exclusive possession are gone together. 

These, and similar reasons, contribute to show the source of lite^ 
rary property every where. They justify the positive provisions, and 
manifest the wisdom of them which give existence to it among our- 
selves. It is not to be found in natural law or common law, and the 
deficiency is wisely and aptly supplied. 

The inconveniences to the public that would be the consequence 
of mere common law assertion of the right would be endless. It 
would lead to perpetual strife. If the mere individual stamp of 
authorship would afford even a foundation for a claim, originality 
might be pretended to by numerous individuals, and a test of truth 
might not be obtained. If the real author give his work the official 
stamp of originality before it goes forth into the world, most of the 
questions that would otherwise occur are anticipated. The source 
of exclusive ownership is therefore found in positive enactments, and 
not in any unwritten law. 

What is the common law of the United States ? To sustain a 
copy-right, it must be a very different thing from what the sages of 
the American law have supposed. To construe existing laws and 
contracts, to aid in giving them effect, to furnish lucid definitions, 
sound principles, and apt analogies, it is rich in the most important 
uses. For all these, and various other purposes, it is indispensable. 
Most of the crimes prohibited by statute would be misunderstood 
without its assistance ; all of the civil enactments would become ob- 
scure if it did not shed its light in never-failing streams upon them. 
Yet it cannot originate a single punishment, or create a single crime. 
It does not give any jurisdiction to the judge, or increase the number 
or widen the extent of the subjects on which he has authority to de- 
cide. When he has a duty to perform, it gives him wisdom and 
strength to perform it; but the duty itself it cannot create, enlarge, 
diminish, or destroy. 

This subject is well treated of by Mr. Duponceau, in his Disserta- 
tion on the Nature and Extent of the Jurisdiction of the Courts of 



81 

the United States. In his preface, (page xi.,) he says, " the cottitnod 
law in the United States is no longer the source of power or jurisdic- 
tion, but the means or instrument through which it is exercised ; 
therefore, whatever meaning the words common law jurisdiction may 
have in England, with us they have none ; in our legal phraseology they 
may be said to be insensible.'''' To them may be applied the lan- 
guage in which the common lawyer of old spoke of a title of the civil 
law : " in ceiix parolx n'y ad pas entendment." 

Again, preface, pages xiv, xv, " I contend that in this country no 
jurisdiction can arise,'''' from the common law as a source of power, — 
" while,'''' as a means for its exercise, " every lawful jurisdiction may 
be exercised through its instrumentality, and by means of its proper 
application." 

The common law would be impracticable in its application to copy- 
rights in the United States. It might vary in every state in the union 
from the rest. What is the common law of New-York or Pennsyl- 
vania? It is the common law of England, as it has been adopted 
or modified in those respective states. Each state then has or may 
have its own common law, as a system, or as it applies to a particu- 
lar subject of regulation or control. But copy-rights, as recognised 
by the United States, must be uniform. There cannot therefore he a 
St ate common law for copy -rights, for thewant of necessary uniformity ; 
and if the United States cannot derive it through the states, they 
have it not at all. " Th'is power,'''' says Chancellor Kent, (2 Com. 
299.) was very properly confided to Congress, for the states could not 
separately make effectual provision for the case.'''' 

The states themselves at no time ever treated this as a common 
law right. Before the adoption of the federal constitution, accord- 
ingly, several of them are found to have made special provision by 
statute on the subject. New-Hampshire, Massachusetts, Connecti- 
cut, New-Jersey, Maryland, and North Carolina, each passed acts of 
assembly, to secure to authors an exclusive enjoyment for a term of 
years. Why should they have secured a right already in full exist- 
ence ? They might have merely provided a penalty for an idready 
perfect right. The periods for which an exclusive right is maintained 
are different in these provincial enactments. In Germany, this diffi- 
culty is cured, by rendering them perpetual in each department. 
But there is no common government in that country to which the 
subject can be referred. 

This is a subject expressly ceded by the states to the general 
government. It is extinguished with regard to them in all its parts. 
Whatever power or control the states might have exercised, is now 
gone, and all is vested in the United States. No common law power, 
then, of any kind, in relation to copy-rights exists. Not in the states, 



for they have surrendered the whole subject to the federal govern- 
ment. Not in the United States, for they exercise only the jurisdic- 
tion which is conferred by the constitution and the laws. Nor have 
they declined or omitted to fulfil the trust thus confided to them. If 
some powers are left unexercised, (as in the case of bankruptcy,) 
such omission cannot be asserted with regard to the protection of 
literary property. It is amply provided for. No assistance is needed 
from any other jurisdiction : no deficiency is even suggested to have 
been left to be supplied. 

Mr. Duponceau, in his treatise already cited, (page 101,) asserts, 
" that when the federal courts are sitting in and for the states, they 
can, it is true, derive no jurisdiction from the common law; because 
the people of the United States, in framing their constitution, have 
thought proper to restrict them within certain limits ; but that, when- 
ever by the constitution, or the laws made in pursuance of it, juris- 
diction is given to them either over the person or subject matter, 
they are bound to take the common law as their rule of decision, 
whenever other laws, national or local, are not applicable." 

Judge Chase, in the case of The United States v. Worrall, (2 
Dallas^s Rep. 384,) uses this comprehensive phrase, " in my opinion 
the United States, as a federal government, have no common law !" 
" If, indeed, the United States can be supposed for a moment to 
have a common law, it must, I presume, be that of England ; and 
yet it is impossible to trace when or how the system was adopted 
or introduced." 

It would be most strange if the double jurisdiction did exist. 
The constitution and the statutes enacted in furtherance of its pro- 
visions, instead of providing or extending rights and remedies, would 
have greatly limited and restrained them : instead of doing, as they 
were designed to do, much benefit to the author, they have done him 
much positive harm. He had already, according to the theory we 
are opposing, rights by the common law. These rights, if they were 
perfect in their nature, were unlimited in their extent. The patron- 
age of American legislation then abridges the duration of the right, 
if it does not curtail its enjoyment, by imposing restraints and pre- 
scribing preliminary forms. It does more : it dravifs a distinction be- 
tween the stranger and the citizen or resident ; but the distinction, if 
it mean any thing, is in favour of the former, and against the latter. 
The natural law, or common law, would be unlimited in the duration 
of the privilege which it would confer, and the labour and skill ex- 
hibited in the composition would secure the right. This would be 
an innate privilege of the foreigner. The statute law afterwards 
comes and confines the security to a term of years, and makes the 
way to obtain it intricate, or at least perplexed ! How does this con- 



83 

sist with the language or the spirit of the eigiitli clause of the eighth 
section of the first article of the constitution ? That clause ordains, 
that Congress shall have power to " promote the progress of science 
and useful arts, by securing for limited times, to authors and inventors, 
the exclusive right to their respective writings and discoveries." It 
would not be to promote but to retard that progress, if it possessed 
already a more active stimulus. There would be no occasion to 
secure for a limited time, if the exclusive right already existed in 
perpetuity. 

The case of Ewer v. Coxe, (4 WasJdngton^s Circuit Court Reports, 
487.) is broad enough to cover all that is now contended for. Judge 
Washington, having demonstrated the necessity of the proprietor's 
complying with the provisions of the act of Congress, in order to ob- 
tain the benefit conferred by that act, declares, " if he has not that 
right, he can have no remedy of any kind." The right thus referred 
to, was one purely under the statute. But it was the only available 
one that could exist — the only one that could carry with it, or be 
productive of, any remedy. 

In order to sustain his claim at all, an author who has not complied 
with the provisions of the statue, must make out these several 
positions : — 

1. That a right and a remedy existed independently of the statute, 
and prior to it. 

2. That the provision of redress by the statute does not take away 
a previous right. 

We have endeavoured to show, that the first of these positions is 
unsound, and if so, the second is altogether inapplicable. 

The language of the Supreme Court of New-York, {Almy v. Har- 
ris, 5 Johnson, 175. See also Scidmore v. S7nit/t, 13 Johnson, 322 ; 
and 1 Rol. Ahr. 106, pi. 16.) applied to a totally diflTerent matter, may 
be usefully quoted here. "If Harris had possessed a right at the 
common law, to the exclusive enjoyment of this ferry, then the statute 
giving a remedy in the affirmative, toithout a negative cxpj-essed or 
implied, for a matter authorized by the common law, he might, not- 
withstanding the statute, have his remedy by action at the common 
law. (1 Com. Dig. Action on Statutes, C.) But Harris had no ex- 
clusive right at the common law, nor any right but what he derived 
from the statute. Consequently, he can have no right since the 
statute, but those it gives ; and his remedy, therefore, must be under 
the statute, and the penalty only can be recovered." 

But " where a statute gives a right, and furnishes the remedy, that 
remedy must be pursued." (Gedney v. The Inhabitants of Tewkes- 
bury, 3 Mass. Rep. 309.) And " wheti a statute creates a new right, 
without prescribing a remedy, the common law will furnish an ade- 



84 

quale remedy to give effect to the statute right. But when a statute 
has created a new right, and has also prescribed a remedy for the 
enjoyment of the right, he who claims the right must pursue the 
statute remedy." {Smith v. Dean, 5 Mass. Rep. 515.) 

The same principles will make it necessary, in order to reach the 
rights which the statute creates, to pursue the means which it points 
out. Judge Washington, in Ewer v. Co.xe, (4 Wash. C. C. Rep. 
491.) already cited, says, "that the author must perform all that is 
pointed out before he shall be entitled to the benefit of the act. It 
seems to me," says he, " that the act will admit of no other con- 
struction." 

The case of Beckford v. Hood, (7 T. R. 620.) has been relied on to 
show that the directions of the English statute are not necessary pre- 
liminaries to the establishment of the right. The judges of the king's 
bench were construing a very different statute from ours. The se- 
cond section of the act of 8 Anne, c. 19, {Statutes at Large, 12 vol. 
82.) recites, that " whereas many persons may, through ignorance, 
offend against this act, unless some provision be made whereby the 
property in every such book, &c., may be ascertained," &c., and 
then enacts, that " nothing in this act contained shall be construed to 
extend to subject any bookseller, printer, or other person whatsoever, 
to the forfeitures or penalties therein mentioned, for or by reason of 
the printing or reprinting of any book or books without such consent 
as aforesaid, unless the title to the copy of such book or books here- 
after published shall, before such publication, be entered in the register 
book of Stationers' Hall," &c. 

The corresponding clause of the act of Congress, of April 29, 1802, 
runs thus ; "that every person, &c., before he shall be entitled to the 
benefit of the act, &c., shall, in addition to the requisites," &c. The 
preliminary in the English statute is connected directly with the 
penalty. In ours, it is directly associated with the whole benefit of 
the act. The decision in Beckford v. Hood cannot affect the present 
case, even if it be sound. Of the soundness of it there may be much 
doubt, when we find Lord Hardwicke deciding, in Blackwell v. Har- 
per, 2 Athjns, 95, that " upon the act of 8 Ajine, c. 19, the clause of 
reoistering with the Stationers' Company is relative to the penalty, 
and the property cannot vest without such entry." A farther view is 
taken by Judge Hopkinson, of this decision, in Beckford v. Hood, 
which is respectfully submitted as a conclusive reply. It will be 
found in his printed opinion, page 14, &c. 

Let us look at the statutes themselves. The question here between 
us seems to be whether the acts of Congress mere\y provide a remedy, 
or also constitute a right. 

The act of 31st of May, 1790, would have commenced with its 



85 

second section if it had merely intended to suggest redress for the in- 
fringement of an existing right. This second section, however, is 
only a corollary or incident to the first, which provides, in compli- 
ance with what the constitution had authorized, security to authors 
which they did not in any shape enjoy before. There is nothing de- 
claratory about it. 

" From and after the passing of this act, the author, &c. shall hate 
the sole right,'''' &c. &c. The right is certainly prospective, and it 
is (we say) conditional. The right is to arise at all events subse- 
quently to the passage of the act, and it is to commence " from the 
recording the title, &c. in the clerk's office, as is hereinafter di- 
rected." 

It would seem to be quite unnecessary thus gravely to confer in 
prospect a privilege already enjoyed, and to trammel it with con- 
ditions, if it was already unconditional. This is certainly no restrain- 
ing statute. 

An argument has already been used, and it will not be formally re- 
peated, that the ostensible or professed encouragement of learning, 
by securing, &c., during the times mentioned, would be a mere de- 
lusion : for the encouragement had been more liberal — the security 
not less perfect — and the right more comprehensive, because of un- 
limited extent, if they respectively had amj anterior existence what- 
ever. It is no less striking, that Congress, who are supposed to be 
declaring the common law, and merely providing a precise penalty 
for the infraction of a right under it, could not, by any possible ex- 
ercise of their power or authority, come up to the supposed common 
law right; for the paramount authority of the constitution restrains 
the exercise of any encouragement to a limited time. 

The act proceeds to mark out the preparatory step towards penalty 
or prohibition, viz. : the legal acquisition of a copy-right, (sec. 1.) 
And how is the copy -right to be legally acquired? Why, only by 
following the directions of the statute, i. e. depositing the title in 
the clerk's office, publishing the record, and delivering a copy within 
six months to the secretary of state, to be preserved in his office, 
(sec. 3.) 

Judge Washington was inclined to think that some of these pro- 
visions were merely necessary to enable the author to sue for the for- 
feitures provided by the second section. 

But that would be quite an empty satisfaction. The copies for- 
feited by the invading party are to be destroyed ; and the penalty of 
fifty cents for every sheet in his possession, belongs one half to the 
United States. The author is not much the better for this provision. 
He might have reserved all the damages for himself, independently 
of the act, if the right existed previously. 
11 



86 

it is not necessary to rely upon the construction of this act alone,- 
if there be any doubt with regard to the true interpretation of it. 
The supplementary act, passed April 29, 1802, is free from all 
difficulty. It is on this that Judge Washington relies. 

This last act provides, (sec. 1.) that the author, " before he shall 
be entitled to the benefit, &.c., shall," in addition to the requisites, 
enjoined in the third and fourth sections of said act, &c. " give in- 
formation, by causing the copy of the record, &c. to be inserted at 
full length in the title-page," &c. 

it thus makes those clauses, which had before been of doubtful 
name, requisites. It requires him to perform them, not as preliminary 
to forfeiture or penalty, which are only particular provisions of parts 
of the act, but as preliminary to the benefit of the act itself He, 
therefore, in terms, is denied its advantages, unless he perform the 
conditions precedent. 'J'hese, agreeably to a well-known rule, are to 
be construed strictly, and the party who omits to bring himself 
within them can claim no right whatever. The statute becomes a 
unit ; all its benefits are yielded or withheld, exactly as all its re- 
quisites have been fulfilled or disregarded. 

Requisite is aptly defined by the American lexicographer, Noah 
Webster, to be " so needful that it cannot be dispensed with ; some- 
thing indispensable." An author must show that he has complied 
with these affirmative requisitions, or they will not be presumed for 
him. 

There are familiar analogies which will fully sustain this positiofi. 
Take the statute which regulates distresses for rent. Certain pro- 
visions are made which justify a landlord for acts which would other- 
wise amount to a trespass. But he must show that he has performed 
them strictly, or, as the law first stood in England, and does still in 
Pennsylvania, he is a trespasser ub initio / and the statute of Geo. II. 
Only so far alters the rule, as to leave the party to his remedy by 
action oil the case, for the recovery of the actual damages that may 
have been sustained. 

If notice be required by statute, as, for example, preparatory to a 
suit against a magistrate for misconduct in office, not only is it never 
presumed, but nothing can supply its proof: not even knowledge of 
the design to sue, which might be substantially the same thing. In 
such case, knowledge is not notice. 

There is nothing against our construction in the principle which 
requires a strict interpretation of certain statutes. If the act be penal, 
we are hot endeavouring to enfore the penalty. There is nothing 
penal as to the author claiming the copy-right. All the penalties are 
tigainst other persons. It is to be construed strictly when it is to be 
enforced against them. He claims the benefit of his copy-right, 



87 

which is a grant to be obtained only on conditions precedent and 
well defined. He attempts to enforce with rigour, if not the penal 
forfeitures, at least the penal prohibitions of the law, against the 
defendant, whom he alleges to be a wrongdoer. Against the de- 
fendant, thus, without (if it be without) bringing himself under the 
provisions of the law, the alleged proprietor denounces awful con? 
sequences. The defendant asks nothing — wants nothing, but to be 
Jet alone until it can be shown that he has violated the rights of 
another. 

Where is the difference between this act and the act respecting 
patents, as regards the right of the alleged owner? This court has 
said, that if a defendant, sued for the infringement of a patent-right, 
" shows that the patentee has failed in any of these prerequisites on 
which the authority to issue the patent is made to depend, his der 
fence is complete. He is entitled to the verdict of the jury and the 
judgment of the court." {Grant v. Raymond, 6 Peters, 220.) 

in. The provisions of the acts of Congress have not been com- 
plied with. 

The requisites are ; — 

1. The deposit of a printed copy of the title in the clerk's office 
,of the district court where the author or proprietor resides. 

2. Within two months from the date thereof, the publishing of a 
(Copy of the record in one or more newspapers, printed in the United 
States, for four weeks. 

3. Within six months, the delivery, &c. to the secretary of state of 
a copy to be preserved in his office. 

With regard to the first volume, the bill is defective in not stating 
either of the two last requisites. (Vide Paper Book, p. 8.) The com- 
plainants are informed hy M. Carey, and believe that all things which 
are requisite and necessary to be done, &c. have been done ! ! 

An inference or conclusion even of the party would be a forry 
substitute for the allegation and proof of the facts themselves. The 
court must have an opportunity to judge whether all things were 
done, &c. ; and that they can have only when the things which were 
done are exhibited and proved. But here is double distilled infer- 
ence. The parties are Informed of Matthew Carey's conjecture; 
and this is presented to the court as a substitute for proof; while H. 
C. Carey proves that Matthew Carey knew nothing about it, for all 
was left to him. (Vide Paper Book, p. 23.) It is extraordinary if Mr, 
Carey really possessed any information on this subject, that he waf 
not produced as a witness. 



Upon the complainants' own allegations, their case must fail. But 
the proof is scarcely less defective than the allegations of the bill. 
Henry C. Carey, the clerk of his father in 1816, states that they 
were in the habit of advertising, and from the course of business he 
does not doubt it was advertised, but he has 7io recollection of it. He 
has no recollection at all of a deposit of a copy in the oflice of the 
secretary of state. But he says, that the most probable way in which 
it was sent, was by Mr. Wheatun. In other words, that it was not 
sent by himself; and, therefore, as to any proof from him, that it was 
not sent at all. 

Mr. Brent states, (Record, p. 41.) that the eighty copies of the 
volume of Wheaton's Reports, containing the decisions for February 
Term, 1817, were delivered to the department of state, on or before 
the 4th day of November, 1817. This refers, of course, to the 
second volume, which contains the decisions of that term, and not 
the first, which is for the previous year. Subsequent volumes had 
been delivered in the same manner ; all of them were received under 
the acts of Congress, giving a salary to the reporter. He adds, that 
there has always been, according to his recollection, one or more 
complete sets of said reports, from the time of their publication, in 
the said department of state. But he is unable to recollect or state 
more particularly ivheii the same were first placed in said depart- 
ment, or for what purpose. 

Both of these particulars, it is conceived, must be made out. The 
delivery must be within six months. The loose declaration that, 
according to his recollection, there has always been one or more 
sets, &c. f7-om the time of publication, if it could have any force by 
itself, is done away by his acknowledged inability to recollect when 
they were first placed there. The object of the receipt of them, too, 
is directly the reverse of that prescribed by the copy-right law; for, 
instead of being delivered to he preserved in the office, &c. they were, 
if delivered at all, merely a part of a general library, intended to be 
lent out and used. If delivered to be preserved, the presumption is, 
that the particular copy so left would be found. It will scarcely be 
contended that the second edition of the first volume can cure the 
defects of the first. It can have no copy-right existence by itself. 

With regard to the subsequent volumes, the bill is scarcely less de- 
fective. The declaration of Robert Dona'dson (page 4.) is vague 
and unsatisfactory. It could not be otherwise. He knew nothing 
of the subject. The result of the inquiries at the department of 
state is evasively set forth in page 5, and were it otherwise, he must 
state the fact, and not the inquiry. 

The bill proceeds to insist that the complainants would still be en- 
titled to the benefits of the acts of Congress, although they should be 



89 

unable to prove that a copy was delivered, &.c. We say that such 
proof is a necessary preliminary. 

The proof, with regard to these subsequent volumes, is equally de- 
fective. Of the second volume, there is no proof of publication. And 
of none of the volumes is there either allegation or proof of deposit 
agreeably to the provisions of the law. 

The fourth volume wants publication. It began August 'iSth, and 
ended September 17th, instead of 25th. 

The seventh had but two publications in July, four in August, and 
one in September. 

The eighth had one publication in October, five in November, and 
two in December. 

Of the ninth there is no evidence of publication at all. 

The tenth, eleventh, and twelfth, are all defective in publication. 

It is not necessary to dwell upon the facility with which proof of 
delivery might have been preserved and exhibited if it had been made. 
The requisites of the law must be shown. But the certificate of Mr. 
Mr. Van Buren, (page 25.) with regard to the second edition of the 
first volume, is a specimen of what might have been, and would have 
been produced, with regard to the whole, if the deposit had in fact 
been made. 

In the absence of all right on the part of the complainants, not 
much difficulty is apprehended from any supposed possession or en- 
joyment, by colour of privilege. Judge Washington, in delivering 
his opinion, in Ewer v. Coxe, disposes of this question to our hand. 
(4 Wash. C. C. Rep. 489.) " I hold it to be beyond controversy," 
says he, "that if the plaintiff has no copy -right in the work of which 
he claims to be the owner, a court of equity will not grant him an 
injunction. This was formerly the doctrine of the English Court of 
Chancery, and still is, as I conceive, nothwithstanding Lord Eldon 
has, in some instances, granted an injunction, and continued it to the 
hearing, under circumstances which rendered the title doubtful if the 
plaintiff had possession under a culoiir of title. But surely if he has 
no title at all, or such a one as would enable him to recover at law, 
even that judge would, I presume, refuse an injunction." 

The authorities cited by Judge Washington support the principle 
which he maintains. 

Against whom is this mere naked possession claimed ? Not the 
defendant ; for during the period when it has existed, he was only 
one of the mass of individuals who had not any particular concern in 
disturbing the complainants' colourable claims. It is therefore 
against the public, who cannot thus be baffled of their rights. 

It is, however, a most extraordinary case, that would justify a per- 
petual injunction without a trial at law. This is a proceeding 



90 

which turns aside from the regular and proper mode of ascertaining 
title, and asks that the existence of it shall be definitively rested upon 
mere colourable claims. The complainants do not choose to bring 
their case to the proper test : but assuming as conclusive, what at the 
utmost is only prima facie evidence in their favour, they propose to 
hang up for ever, in a state of presumption and doubt, that which is 
susceptible of a "just and satisfactory settlement. All that the de- 
fendants ask, in the dismission of the bill is, that their rights may not 
be prejudged. 



IV. The reports of the decisions of the Supreme Court, published 
by a reporter, appointed under the authority of the acts of Congress, 
are not within the provisions of the laws for the protection of copy- 
rights. 

The acts of Congress relating to the appointment of a reporter, 
are to be found in 3 Ston/s Laws of the United States, 1639, 1803, 
1913, and 2046. 

The first act was passed on the 3d of March, 1817. It is entitled, 
^' An act to provide fo?- the publication of the decisions of the Supreme 
Court of the United States.'''' It was limited to three years, and 
was afterwards continued by the act of 15th May, 1820, for three 
years longer. Similar provisions were made by subsequent legjs^ 
lation, for the publication of the decisions, until February, 1830, 

All the volumes of the reports of Mr. W heaton, with the exception 
of the first, were published under these laws ; and the compensation 
allowed for the same was paid to him by the United States. {Printed 
Record, 42 to 47.) 

The first section of the act of 1817, and the same provisions are 
contained in all the laws, directs the appointment of a reporter by the 
court, " who shall be entitled to receive for his services, an annual 
compensation of one thousand dollars.'" This " compensation " is 
to be paid on his printing and publishing' the decisions of the court 
within a fixed period, after they are made ; and on delivering eighty 
copies of the same to the department of state. 

By this section, the reporter is made the officer or agent of the 
public, charged with the duty of printing and "publishing^"' the 
decisions of this court ; thus giving to the citizens of the United 
States, for a compensation from the treasury, in an authentic and 
official form, the proceedings of that tribunal. For the performance 
of those duties, for the collection, preparation, and arrangement of 
the matter to form the reports, and for the eighty copies to be de^ 
livered to the government for the use of its officers and others, the 



91 

iffeporter is annually paid the sum of one thousand dollai's. This 
sum is not paid to him for the copies of the work only : at no period 
has the price of the annual volume been such, as that to have pur- 
chased the same number of copies would have required that amount. 
It is paid to him for the devotion of his learning, his talents, and his 
time, to the trust confided to him ; and the results of his labours, 
thus paid for, are, thereby, public property. 

He becomes the particular agent of the government, by authority 
of law, to print and publish the decisions of the court ; and, under 
this authority, he receives from the judges of the court, their opinions 
in writing, for the purposes of printing and publication, and not to 
become his property under the copy right acts. 

The reports, prepared, printed, and published by the reporter, be- 
come, from the moment of their publication, as much the unlimited 
property of the citizens of the United States, for the purposes of re- 
publication ; to extend the knowledge and use of their contents ; as 
any " public document," or " report," prepared, printed, and pub- 
lished by any of the officers of the government, charged with such 
trusts, and paid for the performance of the same out of the public 
treasury. 

The contract of the reporter, in accepting the appointment, and 
receiving the compensation from the United States for the execution 
of its duties, appears to be capable of no other construction. As the 
officer designated for the purpose of reporting the proceedings and 
decisions of the court, the records of the cases are open to him 
without charge ; the points of law submitted in argument by counsel 
are furnished to him ; and thus the duties of his office are aided, 
and their faithful performance promoted. Published under the 
sanction of a law, specially providing for the same, the reports be* 
come evidence of the proceedings and decisions of the court, in all 
the judicial proceedings of the United States. To assert that the 
work which has thus been brought into existence, for public purposes, 
and at public cost, is exclusively the property of the reporter, and 
belongs to him as " the author " of the work, seems a proposition 
against every circumstance attending their production ; to violate the 
most important rights of the community ; and to be opposed to the 
very purpose which the legislature intended to effect. 

If such be the rights of the reporter, if such shall be the construc- 
tion of the law; unless with the permission of that officer, the public 
cannot have access to the decisions of the court, whose decisions he 
is appointed to print and publish, that they may become as generally 
known, as their authority is universal. The knowledge of those de- 
cisions to be obtained from the copies delivered to the department of 



93 

state, will be confined, in a great degree, to the officers of the govern- 
ment. 

For fourteen years, and, if the reporter shall survive the first four- 
teen years, for other fourteen years, he may, if his vi'ork is protected 
by the law of copy-right, withhold the decisions of the court from the 
whole people of the country; or dole them out at his pleasure, when 
and as he may determine. He has fully complied with all that the 
law enjoins upon him ; he has " printed and published the decisions," 
and he has "delivered the eighty copies to the department of state;" 
for the rest, the reports are his property, as author or otherwise. 
Without his consent, not another copy can be sold or disposed of: 
unless with his consent, the contents of the volumes, the law of the 
property, rights, and privileges of the whole community ; the evi- 
dence of the safe and sound adjustment of all those constitutional 
principles upon which our national prosperity rests, cannot be known 
or enforced. If he should be willing to dispose of them, until the 
act of 1827, which limited the sum at which they were to be sold, 
he might have demanded a price for the volumes beyond the means 
of the greater portion of those who desired to possess them ; even 
beyond the means of any one. In the law of his office, there is no 
obligation to print and publish a greater number of copies, than the 
eighty to be delivered to the government : and thus for twenty-eight 
years, he could keep locked up from the public, to almost every prac- 
tical purpose, the proceedings and judgments of the court. 

If his right would inhibit the publication of the contents of the 
work by any other person, as he alone has authority, by the decision 
of this court, to give certified copies of the opinions of the court, for 
the purposes of their being evidence ; and the expense of these 
copies would be left to his own regulation. No law exists to limit 
his charges for copies. 

Having " deatroyecV the materials from which the reports were 
made, as the appellants say was dove by the reporter, with all the ma- 
terials of Mr. WheatorCs volumes, (^Record, p. 3.) no remedy could 
have been obtained by the interference of the court, for staying these 
wide spreading evils. If the reports were copy-right, there could 
have been no relief. 

That these things have not occurred, is not sufficient. That they 
could have occurred, is enough to authorize the position that they 
were not permitted. 

As well might a copy-right be claimed in the laws of the United 
States, promulgated under the authority of the act of March, 1795, 
(1 Story^s Laws, 409.) and under the laws similar in their provisions, 
passed for the same purposes. 



93 

The laws published under the direction of the secretary of state, 
by the authority of these acts, are prepared by a person appointed 
for the purpose, and who receives " a compensation" for the same. 
He collects the laws ; he ascertains which of them has expired ; 
which has become obsolete; he arranges them ; he prepares a sy 11 a^ 
bus of their provisions, and an index of their contents ; labour, 
talents, learning, accuracy, fidelity, are all required for the execution 
of this trust. The government receives a certain number of copies 
of the work, and the editor, by whose means it has been " printed 
and published," can claim no copy-right for the contents of the 
volume. 

What rights do the government of the United States obtain in the 
matter which composes the eighty copies delivered to the department 
of state by the reporter ? The determination of this question, in the 
absence of every other view of the subject, decides that a copy-right 
cannot exist in the contents of those volumes in favour of the re« 
porter. 

These copies have been brought into existence under the authority, 
and at the expense of the government of the United States. The 
whole materials of which the volumes are composed, have been col. 
lected by the reporter, arranged by him, printed and published by 
him, as Ids official duty, and by his official action. That matter, 
therefore, if any exclusive property in it exists, belongs to the govern, 
ment. It is theirs by procurement, and by purchase. The labours 
of the hands which set it in order, the talents devoted to the trust 
for the execution of the work, were called forth, and have been paid 
for by the government, thus vesting in them the right to the whole 
work, by every rule and principle of property. Could it be asserted 
that the government of the United States has no right, should the 
public exigencies require it, to multiply, by reprints, for public pur^ 
poses, copies of the reports ; and for such purposes, to cause to be 
extracted and printed any of the cases contained in the volume? If 
the reporter has a copy-right to the whole, his right extends to every 
part, and would restrain such a use of any and every portion of ths 
same. 

In the infiuence of the decision of the court in the case of Arre, 
dondo, (5 Peters^ on the extensive and numerous claims to lands in 
Florida, the publication of that case, and its general and gratuitous 
distribution, was considered proper and beneficial. Could the re- 
porter have interposed by an injunction, and arrested the execution 
of such a purpose by the secretary of state ? There can be no copy« 
right, as against the citizens of the United Slates, if none exists 
against the government. 

The necessity and the obligation to promulgate the decisions oi 



94 

the Supreme Court, seem as great as those which have induced fhff 
provisions in the statute book for the pubhcation of the laws. Con- 
gress have so declared, by enacting the different lavi^s for the appoint- 
ment of a reporter, and compensating him for his services. To limit 
the promulgation of those decisions, by declaring them private pro- 
perty, and to be secured for private emolument by the provisions of 
the copy-right acts, would be inconsistent with the first duties of 
every good government — duties which enjoin that the laws shall be 
made known, that they may be obeyed. 

V. An argument may be presented upon the terms in which the 
appellant has asserted his copy-right, in entering the same in the 
office of the clerk of the District Court. In the Record, (p. 27, 29, 
31, &c.) it will be seen that he claims aZZ the contents of the volumes 
of reports, as " author," or " as author and proprietory 

This is certainly an assertion of a right beyond what is sustained 
or justified by his own statements in his bill. In the bill, he declares 
that " the justices of the court furnished him all such writings or 
memoranda, as they might make of their decisions, which would aid 
him in reporting the cases." 

While it is admitted, (for the purposes of the argument,) that the 
reporter may have been " the author" of parts of the contents of 
the volumes; that he was '■'■the proprietor'''' of any other parts of the 
work, than those composed by him, is denied. If " the justices of 
the court furnished him with all such writings and memoranda as 
they might make of their decisions, to aid him in reporting the cases," 
as they certainly did, this was not done to make him the proprietor 
of the matter thus furnished. It was done that the matter might be 
given to the public for the free and unrestricted use of the com- 
munity, that it might be '■'■published " under the law ; and not that 
it should be made the subject of copy-right, and be claimed as pro- 
perty by any one. The assertion of proprietorship, in these "writings 
and memoranda," has as little foundation, as is that of their author- 
ship ; and yet some entries of copy-right assert their oivnership. 

If, as has been repeatedly decided by this court, a patent for an, 
invention is void, which claims more than was truly invented by the 
patentee ; may not the same principles be applied to claims of copy- 
right, when they exceed what is the legitimate subject of them ; and 
assert a property or authorship which belongs to the public, and to 
which no such claim can exist ? 



95 

Mr. Justice M'Lean. — This is an appeal from the decree of the Cir- 
cuit Court of the United States for the Eastern District of Pennsylvania. 
The complainants, Henry Wheaton and Robert Donaldson, in their 
bill, state, that the said Henry Wheaton is the author of twelve books 
or volumes, of the reports of cases argued and adjudged in the Su- 
preme Court of the United States, and commonly known as Whea- 
ton's Reports, which contain a connected and complete series of the 
decisions of said court, from the year eighteen hundred and sixteen 
until the year eighteen hundred and twenty-seven. That before the 
first volume was published, the said Wheaton sold and transferred 
his copy-right in the said volume to Matthew Carey, of Philadelphia, 
who, before the publication, deposited a printed copy of the title- 
page of the volume in the clerk's office of the District Court of the 
Eastern District of Pennsylvania, where he resided. That the same 
was recorded by the said clerk according to law, and that a copy of 
the said record was caused by said Carey to be inserted at full length 
in the page immediately following the title of said book. And the 
complainants further state, that they have been informed and believe 
ihat all the things which are necessary and requisite to be done in 
and by the provisions of the acts of Congress of the United States, 
passed the thirty-first day of May, one thousand seven hundred and 
ninety, and the twenty-ninth day of April, one thousand eight hundred 
and two, for the purpose of securing to authors and proprietors the 
copy-right of books, and for other purposes, in order to entitle the 
said Carey to the benefit of the said acts, have been done. 

It is further stated, that said Carey afterwards conveyed the 
copy-right in the said volume to Matthew Carey, Henry C. Carey, 
and Isaac Lea, trading under the firm of Matthew Carey and Sons, 
and that said firm, in the year eighteen hundred and twenty-one, 
transferred the said copy to complainant, Pvobert Donaldson. That 
this purchase was made by an arrangement with the said Henry 
Wheaton, with the expectation of a renewal of the right of the said 
Henry Wheaton, under the provisions of the aid acts of Congress, 
of which renewal, he, the said Robert Donaldson, was to have the 
benefit, until the first and second editions of the said volume which 
he, the said Donaldson, was to publish, should be sold. That at the 
time the purchase was made from Carey and Sons, a purchase was 
also made of the residue of the first edition of the first volume, which 
they had on hand; and in the year eighteen hundred and twenty- 
seven, he purchased another edition of said volume, a part of which 
still remains unsold. 

The bill further states, that for the purpose of continuing to tha 
said Henry Wheaton the exclusive right under the provisions of the 



96 

said acts of Congress, to the copy of the said volume for the further 
term of fourteen years, after the expiration of the term of fourteen 
years from the recording of the title of the said volume in the clerk's 
office as aforesaid, the said Robert Donaldson, as the agent of Whea- 
ton, within six months before the expiration of the said first term of 
fourteen years, deposited a printed copy of the title of the said volume 
in the clerk's office of the District Court of the Southern District of 
New- York, where the said Wheaton then resided, and caused the 
said title to be a second time recorded in the said clerk's office ; and 
also caused a copy of the said record to be a second time published 
in a newspaper, printed in the said city of New-York, for the space 
of four weeks, and delivered a copy of the said book to the secretary 
of state of the United States ; and that all the things were done 
agreeably to the provisions of the said act of Congress of May 
thirty-first, one thousand seven hundred and ninety, and within six 
months before the expiration of the said term of fourteen years. 

The same allegations are made as to all the other volumes which 
have been published, that the entry was made in the clerk's office, 
and notice given by publication in a newspaper, before the publica- 
tion of each volume; and that a copy of each volume was deposited 
in the department of state. 

The complainants charge^ that the defendants have lately pub- 
lished and sold, or caused to be sold, a volume called " Condensed 
Reports of Cases in the Supreme Court of the United States," con- 
taining the whole series of the decisions of the court, from its organi- 
zation to the commencement of Peters' Reports, at January term, 
eighteen hundred and twenty-seven. That this volume contains, 
without any material abreviation or alteration, all the reports of 
cases in the said first volume of Wheaton's Reports, and that the 
publication and sale thereof is a direct violation of the complainants' 
rights, and an injunction, &c. is prayed. 

The defendants, in their answer, deny that their publication was 
an infringement of the complainants' copy-right, if any they had ; 
and further deny that they had any such right, they not having com- 
plied with all the requisites to the vesting of such right under the acts 
of Congressi 

Some of the questions which arise in the examination of this case, 
are as novel, in this country, as they are interesting. But one case, 
involving similar principles, except a decision by a state court, has 
occurred, and that was decided by the Circuit Court of the Unitec 
States for the District of Pennsylvania, from whose decree no appea 
Was taken. 

The right of the complainants must be first examined. If th. 
J-Ight shall be sustained, as set forth in the bill, and the defendan' 



9^ 

slitt!! be proved to have violated it, tlie court will be bound to give 
the appropriate redress. 

The complainants assert their right on two grounds. 

First, under the common law. 

Secondly, under the acts of Congress. 

And they insist, in the first place, than an author was entitled at 
common law to a perpetual property in the copy of his works, and 
in the profits of their publication, and to recover damages for its in- 
jury by an action on the case, and to the protection of a court of 
equity. 

In support of this proposition, the counsel for the complainants 
have indulged in a wide range of argument, and have shown great 
industry and ability. The limited time allowed for the preparation of 
this opinion, will not admit of an equally extended consideration of 
the subject by the court. 

Perhaps no topic in England has excited more discussion, among 
literary and talented men, than that of the literary property of 
authors. So engrossing was the subject for a long time, as to leave 
few neutrals among those who were distinguished for their learning 
and ability. At length the question, whether the copy of a book, 
or literary composition, belongs to the author at common law, was 
brought before the Court of King's Bench, in the great case o{ Mil- 
lar V. Taylor, reported in 4 Burr. 2303. This was a case of great 
expectation, and the four judges, in giving their opinions seriatim, 
exhausted the argument on both sides. Two of the judges, and 
Lord Mansfield, held that, by the common law, an author had a lite- 
rary property in his works, and they sustained their opinion with very 
great ability. 

Mr. Justice Yates, in an opinion of great length, and with an abili- 
ty, if equalled, certainly not surpassed, maintained the opposite 
ground. 

Previous to this case, injunctions had issued out of chancery to 
prevent the publication of certain works, at the instance of those who 
claimed a property in the copy-right, but no decision had been given. 
And a case had been commenced at law between Tonson and Col- 
lins, on the same ground, and was argued with great ability, more 
than once, and the Court of King's Bench were about to take the 
opinion of all the judges, when they discovered the suit had been 
brought by collusion, to try the question, and it was dismissed. 

This question was brought before the House of Lords, in the case 
of Donaldson v. Becket and Others, reported in 4 Burr. 2408. 

Lord Mansfield, being a peer, through feelings of delicacy, de- 
clined giving any opinion. The eleven judges gave their opinions on 
the following points : — 



98 

1st. Whether at common law an author of any book or literary com= 
position, had the sole right of first printing and publishing the same 
for sale, and might bring an action against any person who printed, 
published, and sold the same, without his consent. On this question, 
there were eight judges in the affirmative and three in the negative. 

2d. If the author had such riglit originally, did the law take it 
away upon his printing and publishing such book or literary compo- 
tion ? and might any person afterwards reprint and sell for his own 
benefit, such book or literary composition, against the will of the 
author ? This question was answered in the affirmative by four 
judges, and in the negative by seven. 

3d. If such action would have lain at common law, is it taken 
away by the statute of 8 Anne? and is an author, by the said statute, 
precluded from every remedy, except on the foundation of the said 
statute, and on the terms of the conditions prescribed thereby? Six 
of the judges to five decided that the remedy must be under the 
statute. 

4th. Whether the author of any literary composition, and his as- 
signs, had the sole right of printing and publishing the same in per- 
petuity by the common law ? Which question was decided in favour 
of the author by seven judges to four. 

5th. Whether this right is any way impeached, restrained, or taken 
away by the statute of 8 Anne? Six to five judges decided that the 
right is taken away by the statute. And, the Lord Chancellor second- 
ing Lord Camden's motion to reverse, the decree was reversed. 

It would appear from the points decided, that a majority of the 
judges were in favour of the common law right of authors, but that 
the same had been taken away by the statute. 

The title and preamble of the statute, 8 Anne, chap. 19, is as fol- 
lows : " An act for the encouragement of learning, by vesting the 
copies of printed books in the authors or purchasers of such copies, 
during the times therein mentioned." 

" Whereas, printers, books'fellers, and other persons, have of late 
frequently taken the liberty of printing, reprinting, and publishing, or 
causing to be printed, reprinted, and published, books and other 
writings, without the consent of the authors or proprietors of such 
books and writings, to their very great detriment, and too often to 
the ruin of them and their families," &c. 

In 7th Term Reports, 627, Lord Kenyon says, " All arguments in 
the support of the rights of learned men in their works, must ever 
be heard with great favour by men of liberal minds, to whom they 
are addressed. It was probably on that account that, when the 
great question of literary property was discussed, some judges of en- 
lightened understanding went the length of maintaining that the 



99 

right of publication vested exclusively in the authors, and those who 
claimed under them, for all time : but the other opinion finally pre- 
vailed, which established that the right was confined to the times 
limited by the act of parliament ; and that, I have no doubt, was the 
right decision." 

And, in the case of The Ihiiversity of Cambridge v. Bryer, (16 
East, 319.) Lord Ellenborough remarked, " It has been said, that the 
statute of 8 Anne has three objects, but I cannot subdivide the two 
first ; I think it has only two. The counsel for the plaintiffs contended, 
that there was no right at common law; and perhaps there might 
not be ; but with that we have not particularly any thing to do." 

From the above authorities, and others which might be referred 
to, if time permitted, the law appears to be well settled in England, 
that since the statute 8 Anne, the literary property of an author in his 
works, can only be asserted under the statute. And that notwith- 
standing the opinion of a majority of the judges in the great case of 
Millar V. Taylor was in favour of the common law right before the 
statute, it is still considered, in England, as a question by no means 
free from doubt. 

That an author at common law has a property in his manuscript, 
and may obtain redress against any one who deprives him of it, or 
by improperly obtaining a copy, endeavours to realize a profit by its 
publication, cannot be doubted ; but this is a very different right 
from that which asserts a perpetual and exclusive property in the 
future publication of the work, after the author shall have published 
it to the world. 

The argument that a literary man is as much entitled to the pro- 
duct of his labour, as any other member of society, cannot be con- 
troverted. And the answer is, that he realizes this product by the 
transfer of his manuscripts, or in the sale of his works, when first 
published. A book is valuable on account of the matter it con- 
tains — the ideas it communicates — the instruction or entertainment 
it affords. Does the author hold a perpetual property in these? Is 
there an implied contract by every purchaser of his book, that he 
may realize whatever instruction or entertainment which the reading 
of it shall give, but shall not write out or print its contents ? 

In what respect does the right of an author difler from that of an 
individual who has invented a most useful and valuable machine? 
In the production of this his mind has been as intensely engaged, as 
long, and, perhaps, as usefully to the public, as any distinguished 
author in the composition of his book. 

The result of their labours may be equally beneficial to society, 
and in their respective spheres they may be alike distinguished for 
mental vigour. Does the common law give a perpetual right to the 



100 

author and withhold it from the inventor? And yet it has never 
been pretended that the latter could hold, by the common law, any 
property in his invention, after he shall have sold it publicly. It 
would seem, therefore, that the existence of a principle may well be 
doubted which operates so unequally. This is not a characteristic 
of the common law. It is said to be founded on principles of jus- 
tice, and that all its rules must confirm to sound reason. 

Does not the man who imitates the machine, profit as much by 
the labour of another, as he who imitates or republishes a book? 
Can there be a difference between the types and press with which 
one is formed, and the instruments used in the construction of the 
other ? 

That every man is entitled to the fruits of his own labour must be 
admitted, but he can only enjoy them, except by statutory provision, 
under the rules of property which regulate society, and which define 
the rights of things, in general. 

But if the common law right of authors were shown to exist in 
England, does the same right exist, and to the same extent, in this 
Ciountry ? It is clear, there can be no common law of the United 
States. The federal government is composed of twenty-four sove- 
reign and independent states, each of which may have its local 
usages, customs, and common law. There is no principle which 
pervades the union, and has the authority of law, that is not em- 
bodied in the constitution or laws of the union. The common law 
could be made a part of our federal system only by legislative 
adoption. When, therefore, a common law right is asserted, we 
must look to the state in which the controversy originated. And in 
the case under consideration, as the copy-right was entered in the 
clerk's office of the District Court of Pennsylvania, for the first volume 
of the book in controversy, and it was published in that state, we 
may inquire, whether the common law, as to copy-rights, if any 
existed, was adopted in Pennsylvania. 

It is insisted, that our ancestors, when they migrated to this coun- 
try, brought with them the English common law, as a part of their 
heritage. That this was the case to a limited extent is admitted. 
No one will contend that the common law, as it existed in England, 
has ever been in force in all its provisions, in any state in this union. 
It was adopted so far only as its principles were suited to the con- 
dition of the colonies. And from this circumstance we see, what is 
common law in one state, is not so considered in another. The 
judicial decisions, the usages and customs of the respective states, 
must determine how far the common law has been introduced and 
sanctioned in each. In the argument, it was insisted, that no pre- 
eumption could be drawn against the existence of the common law, 



iOI 

ois to copy-rights, in Peiinsylvania, from the fact of its never having 
■been asserted until the commencement of this suit. 

It may be true, in general, that the failure to assert any particular 
right, may afford no evidence of the non-existence of such right. 
But the present case may well form an exception to this rule. 

If the common law in all its provisions has not been introduced 
into Pennsylvania, to what extent has it been adopted ? Must not 
this court have some evidence on this subject ? If no right, such as 
is set up by the complainants, has heretofore been asserted, no cus- 
tom or usage established, no judicial decision been given, can the 
■conclusion be justified, that by the common law of Pennsylvania, 
an author has a perpetual property in the copy-right of his works. 
These considerations might well lead the court to doubt the existence 
of this law in Pennsylvania, but there are others of a more con- 
■clusive character. 

The question respecting the literary property of authors was not 
made a subject of judicial investigation, in England, until seventeen 
liundred and sixty, and no decision was given until the case of Mil- 
lar V. Taylor was decided, in seventeen hundred and sixty-nine. 
Long before this time the colony of Pennsylvania was settled. What 
part of the common law did Penn and his associates bring with them 
from England ? 

The literary property of authors, as now asserted, was then un- 
linown in that country. Laws had been passed regulating the publi- 
cation of new works under licenses, and the king, as the head of the 
church and the state, claimed the exclusive right of publishing the 
Acts of Parliament, the Book of Common Prayer, and a few other 
books. No such right, at the common law, had been recognised in 
England when the colony of Penn was organized. Long afterwards 
literary property became a subject of controversy, but the question 
was involved in great dtDubt and perplexity, and a little more than a 
century ago it was decided by the highest judicial court in England, 
that the right of authors could not be asserted at common law, but 
under the statute. The statute of 8 Anne was passed in seventeen 
hundred and ten. Can it be contended that this common law riorht, 
so involved in doubt as to divide the most learned jurists of England 
at a period in her history as much distinguished by learning and 
talents as any other, was brought into the wilds of Pennsylvania by 
its first adventurers ? Was it suited to their condition 1 

But there is another view still more conclusive. In the eighth 
section of the first article of the constitution of the United States, it 
is declared that Congress shall have power " to promote the progress 
of science and useful arts, by securing, for limited times, to 
authors and inventors, the exclusive right to their respective writings 
13 



102 

and discoveries." And in pursuance of the power thus delegated, 
Congress passed the act of the thirtieth of May, seventeen hundred 
and ninety. This is entitled, "An act for the encouragement of 
learning, by securing the copies of maps, charts, and books, to the 
authors and proprietors of such copies, during the times therein men* 
tioned." 

In the first section of this act, it is provided, that from and after 
its passage, the author and authors of any map, chart, book, or books, 
already printed within these United States, being a citizen, &c., who 
hath or have not transferred to any other person the copy-right of 
such map, chart, book, or books, (fcc, shall have the sole right and 
liberty of printing, reprinting, publishing, and vending, such maps, 
book, or books, for fourteen years. 

In behalf of the common law right, an argument has been drawn 
from the word secure, which is used in relation to this right, both in 
the constitution and in the act of Congress. This word, when used 
as a verb active, signifies to protect, insure, save, ascertain, &c. 

The counsel for the complainants insist that the term, as used, 
clearly indicates an intention, not to originate a right, but to protect 
one already in existence. There is no mode by which the meaning 
affixed to any word or sentence by a deliberative body, can be so 
well ascertained, as by comparing it with the words and sentences 
with which it stands connected. By this rule, the word secure as 
used in the constitution could not mean the protection of an ac- 
knowledged legal right. It refers to inventors as well as authors, 
and it has never been pretended by any one, either in this country 
or in England, that an inventor has a perpetual right to sell the thing 
invented, at common law. 

And if the word secure is used in the constitution, in reference to 
a fulnce right, was it not so used in the act of Congress ? 

But, it is said that in that part of the first section of the act of Con- 
gress, which has been quoted, a copy-right is not only recognised as 
existing, but that it may be assigned, as the rights of the assignee are 
prottcted the same as those of the author. 

As before stated, an author has, by the common law, a property 
in his manuscript, and there can be no doubt that the rights of 
an assignee of such manuscript would be protected by a court of 
chancery. 

This is presumed to be the copy-right recognised in the act, and 
which was intended to be protected by its provisions. And this pro- 
tection was given as well to books published under such circum- 
stances as to manuscript copies. 

That Congress, in passing the act of seventeen hundred and ninety, 
did not legislate in reference to existing rights, appears clear, from 



103 

the provision that the author, &c. " shall have the sole right and 
liberty of printing," &c. Now if this exclusive right existed at com- 
mon law, and Congress were about to adopt legislative provisions 
for its protection, would they have used this language? Could they 
have deemed it necessary to vest a right already vested ? Such a 
presumption is refuted by the words above quoted, and their force is 
not lessened by any other part of the act. 

Congress then, .by this act, instead of sanctioning an existing right, 
as contended for, created it. This seems to be the clear import 
of the law, connected with the circumstances under which it was 
enacted. 

From these considerations, it would seem, that if the right of the 
complainants can be sustained, it must be sustained under the acts 
ot Congress. Such was, probably, the opinion of the counsel who 
framed the bill,* as the right is asserted under the statutes, and no 
particular reference is made to it as existing at common law. 

The claim, then, of the complainants, must be examined in refer- 
ence to the statutes, under which it is asserted. 

There are but two statutes which have a bearing on the subject . 
one of thom has already been named, and the other was passed the 
twenty-ninth of April, eighteen hundred and two. 

The first section of the act of seventeen hundred and ninety pro- 
vides, that an author, or his assignee, " Shall have the sole right and 
liberty of printing, reprinting, publishing, and vending such map, 
chart, book, or books, for the term of fourteen years from the record- 
ing of the title thereof in the clerk's office, as hereinafter directed : 
and that the author, &c. in books not published, &c. shall have the 
sole right and liberty of printing, reprinting, publishing, and vending 
such map, chart, book, or books, for the like term of fourteen years, 
from the time of recording the title thereof in the clerk's office, as 
aforesaid. And if, at the expiration of the said term, the author, &c. 
shall have the same exclusive right continued to him, &c, for the fur- 
ther term of fourteen years : provided he or they shall cause the title 
thereof to be a second time recorded and published, in the same 
manner as is hereinafter directed, and that within six months before 
the expiration of the first term of fourteen years." 

The third section provides, that " No person shall be entitled to 



» This supposition, if it be important, is erroneous. The bill was drawn by Mr. 
Paine, after consultation with Mr. Binney and Mr. Chauncey, and with the most 
deliberate purpose of relying on the common law right. It was with this view alone, 
that the citizenship of the parties was made the ground of jurisdiction. 



104 

the benefit of this act, &c. unless he shall first deposit, &c. a printed 
copy of the title in the clerk's office, &c. And such author or pro- 
prietor shall, within two months from the date thereof, cause a copy 
of said record to be published in one or more of the newspapers 
printed in the United States, for the space of four weeks." 

And the fourth section enacts, " that the author, &c. shall, within 
SIX months after the publishing thereof, deliver, or cause to be de- 
livered, to the secretary of state, a copy of the samg, to be preserved 
in his office." 

The first section of the act of eighteen hundred and two provides, 
that every person who shall claim to be the author, &c., before he 
shall be entitled to the benefit of the act, entitled " An act for the 
encouragement of learning, by securing the copies of maps, charts, 
and books, to the authors and proprietors of such copies, during the 
time therein mentioned, he shall, in addition to the requisites en- 
joined in the third and fourth sections of said act, if a book or books, 
give information, by causing the copy of the record, which by said 
act he is required to publish, to be inserted in the page of the book 
next to the title." 

These are substantially the provisions by which the complainants' 
right must be tested. They claim under a renewal of the term ; but 
this necessarily involves the validity of the right under the first, as 
well as the second term. In the language of the statute, the " same 
exclusive right" is continued the second term that existed the first. 

It will be observed, that a right accrues under the act of seventeen 
hundred and ninety, from the time a copy of the title of the book is 
deposited in the clerk's office. But the act of eighteen hundred and 
two adds another requisite to the accruing of the right, and that is, 
that the record made by the clerk shall be published in the page next 
to the title-page of the book. 

And it is argued with great earnestness and ability, that these are 
the only requisites to the perfection of the complainants' title. That 
the requisition of the third section, to give public notice in the news- 
papers, and that contained in the fourth, to deposit a copy in the de- 
partment of state, are acts subsequent to the accruing of the right, 
and whether they are performed or not, cannot materially affect the 
title. 

The case is compared to a grant with conditions subsequent, 
which can never operate as a forfeiture of the title. It is said, also, 
that the object of the publication in the newspapers, and the deposit 
of the copy in the department of state, was merely to give notice to 
the public, and that such acts, not being essential to the title, after so 
great a lapse of time, may well be presumed. That if neither act had 



105 

been done, the right of the party having accrued before either was 
required to be done, it must remain unshaken. 

This right, as has been shown, does not exist at common law : it 
originated, if at all, under the acts of Congress. No one can deny, 
that when the legislature are about to vest an exclusive right in an 
author, or an inventor, they have the power to prescribe the condi- 
tions on which such right shall be enjoyed. And, that no one can 
avail himself of, such right who does not substantially comply with 
the requisitions of the law. 

The principle is familiar, as it regards patent-rights, and it is the 
same in relation to the copy-right of a book. If any difference shall 
be made as it respects a strict conformity to the law, it would seem 
to be more reasonable to make the requirement of the author, rather 
than the inventor. 

The papers of the latter are examined in the department of state, 
and require the sanction of the Attorney General ; but the author 
takes every step on his own responsibility, unchecked by the scrutiny 
or sanction of any public functionary. 

The acts required to be done by an author to secure his right, are in 
the order in which they must naturally transpire. First, the title of the 
book is to be deposited with the clerk, and the record he makes must 
be inserted in the first or second page ; then the public notice in the 
newspapers is to be given, and within six months after the publication 
of the book, a copy must be deposited in the department of state. 

The right undoubtedly accrues on the record being made with 
the clerk, and the printing of it as required ; but what is the nature 
of that right ? Is it perfect ? If so, the other two requisites are 
wholly useless. How can the author be compelled either to give 
notice in the newspaper, or deposit a copy in the state department ? 
The statute affixes no penalty for a failure to perform either of these 
acts ; and it provides no means by which they may be enforced. 
But we are told they are unimportant acts. If they are indeed 
wholly unimportant. Congress acted unwisely in requiring them to 
be done. But whether they are unimportant or not, is not for the 
court to determine, but the legislature. And in what light they were 
considered by the legislature, we can learn only by their official acts. 
Judging then of these acts by this rule, we are not at liberty to say 
they are unimportant, and may be dispensed with. They are acts 
which the law requires to be done, and may this court dispense with 
their performance ? 

But the inquiry is made, shall the non-performance of these subse- 
quent conditions operate as a forfeiture of the right ? The answer 
is, that this is not a technical grant of precedent and subsequent 
conditions. All the conditions are important ; the law requires them 



106 

to be performed, and consequently their performance is essential to 
a perfect title. On the performance of a part of them a right vests, 
and this was essential to its protection under the statute, but other 
acts are to be done, unless Congress have legislated in vain, to render 
the right perfect. 

The notice could not be published until after the entry with the 
clerk, nor could the book be deposited with the secretary of state 
until it was published. But these are acts not less important than 
those which are required to be done previously. They form a part 
of the title, and until they are performed, the title is not perfect. 

The deposit of the book in the department of state may be im- 
portant to identify it at any future period, should the copy-right be 
contested, or an unfounded claim of authorship asserted. 

But, if doubts could be entertained whether the notice and deposit 
of the book in the state department were essential to the title, under 
the act of seventeen hundred and ninety, on which act my opinion 
is principally founded, though I consider it in connexion with the 
other act, there is, in the opinion of three judges, no ground for doubt 
under the act of eighteen hundred and two. The latter act declares 
that every author, &c., before he shall be entitled to the benefit of 
the former act, shall, " in addition to the requisitions enjoined in 
the third and fourth sections of said act," if a book, publish, &c. 
Is not this a clear exposition of the first act ? Can an author claim 
the benefit of the act of seventeen hundred and ninety, without 
performing " the requisites enjoined in the third and fourth sections 
of it ?" If there be any meaning in language, the act of eighteen 
hundred and two, the three judges think, requires these requisites to 
be performed, "in addition" to the one required by that act, before 
an author, &c. " shall be entitled to the benefit of the first act." 
The rule by which conditions precedent and subsequent are con- 
strued in a grant, can have no application to the case under con- 
sideration, as every requisite in both acts is essential to the title. 

A renewal of the term of fourteen years can only be obtained by 
having the title-page recorded with the clerk, and the record pub- 
lished on the next page to that of the title, and public notice given 
within six months before the expiration of the first term. 

In opposition to the construction of the above statutes as now 
given, the counsel for the complainants referred to several decisions 
in England, on the construction of the statute of 8th Anne, and other 
statutes. 

In the case of Beckford v Hood, (7 Term, 620.) the Court of King's 
Bench decided, " that an author whose work is pirated before the 
expiration of twenty-eight years from the first publication of it, may 
maintain an action on the case for damages against the offending 



107 

party, although the work was not entered at Stationer's Hall.'* But 
this entry was necessary only to subject the offender to certain 
penalties provided in the statute of 8 Anne. The suit brought was 
not for the penalties, and consequently the entry of the work at Sta^ 
tioners' Hall was not made a question in the case. In the case of 
Blackwell v Harper, (2 Atk. 95.) Lord Hardwicke is reported to have 
said, upon the act of 8 Anne, c. 19., "the clause of registering with 
the Stationers' Company is relative to the penalty, and the property 
cannot vest without such entry, for the words are, that nbthing in 
this act shall be construed to subject any bookseller, &c., to for» 
feitures, &c., by reason of printing any book, &c., unless the title to 
the copy of such book hereafter published, shall, before such publi- 
cation, be entered in the register book of the Company of Stationers.' " 
The very language quoted by his lordship shows, that the entry 
was not necessary to an investiture of the title, but to the recovery 
of the penalties provided in the act against those who pirated the 
work. His lordship decided in the same cause, that under an act of 
parliament, providing that a certain inventor shall have the sole right 
and liberty of printing and reprinting certain prints for the term of 
fourteen years, &c., to commence from the day of first publishing 
thereof, which shall be truly engraved, with the name of the proprie- 
tor, on [each plate, and printed on every such print or prints," the 
property in the prints vests absolutely in the engraver, though the 
day of publication is not mentioned." 

The authority of this case is seriously questioned, in the case of 
Newton v. Cowie, (4 Bingham, 241.) and it would seem from the de- 
cision of Lord Hardwicke, that he had doubts of the correctness of 
the decision, as he decreed an injunction, without by-gone profits ; 
and Lord Alvanly, in the case of Harrison v. Hogg, (cited in 4 Birig. 
342.) said that he was glad he was relieved from deciding on the same 
act, as he was inclined to differ from Lord Hardwicke. 

By a reference to the English authorities, in the construction of 
statutes somewhat analogous to those under which the complainants 
set up their right, it will be found that the decisions often conflict 
with each other, but it is believed that no settled construction has 
been given to any British statutes in all respects similar to those under 
consideration, which is at variance with the one now given. If, how- 
ever, such an instance could be found, it would not lessen the confi- 
dence we feel in the correctness of the view which we have taken. 

The act of Congress, under which Mr. Wheaton, one of the com- 
plainants, in his capacity of reporter, was required to deUver eighty 
copies of each volume of his reports to the department of state, and 
which were probably faithfully delivered, does not exonerate him 
from the deposit of a copy under the act of seventeen hundred and 



108 

Sninety. The eighty volumes were delivered for a different purpose, 
and cannot excuse the deposit of the one volume as specially required. 

The construction of the acts of Congress being settled, in the fur' 
ther investigation of the case, it vi^ould become necessary to look into 
the evidence, and ascertain whether the complainants have not shown 
a substantial compliance with every legal requisite. But on reading 
the evidence, we entertain doubts which induce us to remand the 
cause to the Circuit Court, where the facts can be ascertained by a 
jury. And the cause is accordingly remanded to the Circuit Court, 
with directions to that court to order an issue of facts to be examin- 
ed and tried by a jury, at the bar of said court, upon this point, viz : 
Whether the said Wheaton, as author, or any other person as pro- 
prietor, had complied with the requisites prescribed by the third and 
fourth sections of the said act of Congr^iss, passed the thirty-first day 
of May, seventeen hundred and ninety, in regard to the volumes of 
Wheaton's Reports in the said bill mentioned, or in regard to one or 
more of them, in the following particulars, viz : Whether the said 
Wheaton, or proprietor, did, within two months from the date of the 
recording thereof, in the clerk's office of the District Court, cause a 
copy of the said record to be published in one or more of the news- 
papers, printed in the United States, for the space of four weeks ; 
and whether the said Wheaton, or proprietor, after the publishing 
thereof, did deliver, or cause to be delivered to the secretary of state 
of the United States, a copy of the same to be preserved in his office, 
according to the provisions of the said third and fourth sections of 
the said act. 

And if the said requisites have not been complied \rith, in regard 
to all the said volumes, then the jury to find in particular in re- 
gard to what volumes they or either of them have been so complied 
with. 

It may be proper to remark, that the court are unanimously of 
opinion, that no reporter has, or can have any copy-right, in the 
written opinions delivered by this court; and that the judges thereof 
cannot confer on any reporter any such right. 

Chief Justice Marshall, Mr. Justice Story, and Mr. Justice 
DuvALL, concurred. 



Mr. Justice Thompson.— It is matter of regret with me, at any 
time to dissent from an opinion pronounced by a majority of this 
court. And when my mind is left balancing, after a full examination 
of the case, my habitual respect for the opinions of my brethren, 
may justify a surrender of my own. But where no such apology is 



109 

left to me to rest upon, it becomes a duty to adhere to my own opin- 
ion, and I shall proceed to assign the reasons which have led me to 
.a conclusion different from that to which a majority of the court has 
arrived. 

It is unnecessary for me to state any thing more, with respect to 
the bill and answer, than barely to observe, that the complainants 
an the court below, rest their claim, both upon the statutory, and 
the common law right. The bill charges that all th« provisions of 
ihe acts of Congress have been complied with. That every thing 
has been done, which was required by those acts, in order to entitle 
ithem to the benefit thereof. And that if it were otherwise, the 
orator, Henry Wheaton, has, as the author of said reports, the pro- 
perty in the copy of the same., and the sole right to enjoy and dispose 
of the same. 

It would be improper, in the present stage of this cause, to exa- 
mine the evidence which was before the court below, as to whether 
certain requisites, which it is alleged are required by the a«ts o,f 
.Congress, in order to entitle the complainants to the.benefit of those 
.acts, have been complied with. An issue has been directed to iij.- 
quire into those matters. Nor is it deemed necessary to examine, 
whether the publication of the Condensed Rep&rts by the defendants 
is a violation of the complainants'' copy-right, if they have complied 
with all the requisites of the acts of Congress. This would seeni 
necessarily implied, by the ordering of the issue. For such inquiries 
would be useless if the right secured under those acts has not beep 
violated. 

I shallj therefore,, confine myself to an examination of the com^ 
mon law right, and the eflTect and operation of the acts of Congress 
.upon such right. 

I think I may assume as a proposition not to be questioned, that 
in England, prior to the statute of Anne, the right of an author to 
ihe benefit and profit of his work, is recognised by the common law, 

JVo case has been cited on the argument, and none has fallen 
.under my observation, at all throwing in doubt this general propo^ 
sition. Whenever the question has been there agitated, it has been 
.in connexion with the operation of the statute upon this right. The 
case of Millar v. Taylor, (4 Burr. 2303.) decided in the year 1769, 
was the first determination in the Court of King's Bench, upon the 
common law right of literary property. In that case the broad ques- 
tion is stated and examined, whether the copy of a book or literary 
composition belongs to the author, by the common law. And three 
of the judges, including Lord Mansfield, decided in the affirmative. 
Mr- Justice Yates dissented. But I am not aware that upon this 

li 



no 

abstract question, a contrary decision has ever been made in Eng- 
land. 

This would seem to be sufRcient to put at rest that general ques- 
tion, and render it unnecessary to go into a very particular examina- 
tion of the reasons and grounds upon which the decision was 
founded. The elaborate examination bestowed upon the question, 
by the judges in that case, has brought into view, on both sides of 
the question, the main arguments, of which the point is susceptible. 
The great principle on which the author's right rests, is, that it is 
the fruit or production of his own labour, and that labour, by the 
faculties of the mind, may establish a right of property as well 
as by the faculties of the body. 

And it is difficult to perceive any well founded objection to such a 
claim of right. It is founded upon the soundest principles of justice, 
equity, and public policy. Blackstone, in his Commentaries, (2 vol. 
405.) has succinctly stated the principle, that when a man, by the 
exertions of his rational powers, has produced an original work, he 
seems to have clearly a right to dispose of that identical work as he 
pleases, and any attempt to vary the disposition he has made of it, 
appears to be an invasion of that right. That the identity of a literary 
composition consists entirely in the sentiment and the language. 
The same conceptions, clothed in the same words, must necessarily 
be the same composition, and whatever method be taken to exhibit 
that composition to the ear or to the eye of another, by recital, by 
writing, or by printing, in any number of copies,or at any period of time, 
it is always the identical work of the author which is so exhibited, 
and no other man, it has been thought, can have a right to exhibit it, 
especially for profit, without the author's consent. The origin of 
this right is not probably to be sati;jfactorily ascertained, and indeed, 
if it could be, it might be considered an objection to its existence as a 
common law right. But from the time of the invention of printing, 
in the early part of the fifteenth century, such a right seems to have 
been recognised. The historical account of the recognition of the 
right is to be collected from the discussions in Millar v. Taylor. 
The Stationers' Company was incorporated in the year 1556, and 
from that time to the year 1640, the crown exercised an unlimited 
authority over the press, which was enforced by the summary process 
of search, confiscation, and imprisonment, given to the Stationers' 
Company, and executed by the then supreme jurisdiction of the Star 
Chamber. In the year 1640 the Star Chamber was abolished, and 
the existence of copy-rights before that period, upon principles of 
usage, can only be looked for in the Stationers' Company, or the 
Star Chamber, or acts of state. And the evidence upon this point, 
says Mr. Justice Willes, is liable to little suspicion. It was indiffe- 



Ill 

rent to the views of government, whether the property of an innocent 
book licensed, was open or private property. It was certainly against 
the power of the crown to allow it as private property, without being 
protected by any royal privilege. It could be done only on principles 
of private justice, moral fitness, and public convenience, which, when 
applied to a new subject, make common law, without a precedent, 
much more when received and approved by usage. And in this case 
of Millar V. Taylcn\ it was found by the special verdict, " That be- 
fore the reign of her late majesty Queen Anne, it was usual to pur- 
chase from authors the perpetual copy-right of their books, and to 
assign the same from hand to hand for valuable consideration, and 
to make the same the subject of family settlements for the provision 
of wives and children." This usage is evidence of the common law, 
and shews that the copy-right was considered and treated as pro- 
perty, transferable from party to party, and property too of a perma- 
nent nature, suitable for family settlement and provisions. 

Common law, says Lord Coke, (1 Inst. 1, 2.) is sometimes called 
right, common right, common justice ; and Lord Mansfield says, the 
common law is drawn from the principles of right and wrong, the fit- 
ness of things, convenience, and policy ; and it is upon these princi- 
ples that the copy-right of authors is protected. After the year 1640, 
when the press became subject to license, the various ordinances and 
acts of parliament referred to in Millar v. Taylor, and collected in 
Maugham's treatise on the law of literary property, (p. 13. 16.) 
necessarily imply and presuppose the existence of a common law 
right in the author. 

The common law, says an eminent jurist, (2 KenVs Com. 471.) 
includes those principles, usages, and rules of action, applicable 
to the government and security of person and property, which do 
not rest for their authority upon any express and positive declaration 
of the will of the legislature. A great proportion of the rules and 
maxims, which constitute the immense code of the common law, 
grew into use by gradual adoption, and received from time to time, 
the sanction of the courts of justice, without any legislative act or 
interference. It was the application of the dictates of natural justice, 
and of cultivated reason, to particular cases. In the just language 
of Sir Matthew Hale, the common law of England is not the pro- 
duct of the wisdom of some one man or society of men, in any one 
age, but of the wisdom, counsel, experience, and observation of 
many ages of wise and observing men. And, in accordance with 
these sound principles, and as applicable to the subject of copy-right, 
are the remarks of Mr. Christian, in his notes to Blackstone's Com- 
mentaries, (2 B. Com. 406, and note.) Nothing, says he, is more erro- 
neous than the practice of referring the origin of moral rights, and the 



112 

sysfefti of natural equity, to the savage state, which is stipposedi to have 
preceded civilized establishments, in which hterary composition, and 
of consequence the right to it, could have no existence. But the 
true mode of ascertaining a moral right, is to inquire whether it is 
such as the reason, the cultivated reason of mankind must neces* 
sarily assent tOi No proposition seems more conformable to that 
criterion, than that every one should enjoy the reward of his labour ; 
the harvest, where he has sown, or the fruit of the tree, which he has 
planted. Whether literary property is sui generis, or under whatever 
denomination of rights it may be classed, it seems founded upon the 
same principle of general utility to society, which is the basis of all 
other moral rights and obligations. Thus considered, an author's 
copy-right ought to be esteemed an inviolable right, established in 
sound reason and abstract morality. It is unnecessary, for the pur- 
pose of showing my views upon this branch of the case, to add any 
thing more. In my judgment, every principle of justice, equity, mo- 
rality, fitness, and sound policy, concur in protecting the literary 
lobours of men to the same extent that property acquired by manual 
labour is protected. 

The objections to the admission of the common law right of authors 
are generally admitted to be summed up in all their force and strength 
by Mr. Justice Yates, in the case of Millar v. Taylor. These ob- 
jections may be classed under two heads : the one founded upon the 
nature of the property, or the subject matler ofthe right claimed, and 
the other on the personal abandonment of the right by the author's! 
publication. The first appears to me to be too subtle and metaphy- 
sical to command the assent of any one, or to be adopted as the 
ground of deciding the question. It seems to be supposed that the 
right claimed is to the ideas contained in the book. The claim, says 
Mr. Justice Yates, is to the style and ideas of the author's composi- 
tion, and it is a well established maxim, that nothing can be an object 
of property which has not a corporeal substance. The property 
claimed is all ideal — a set of ideas which have no bounds or marks 
whatever — nothing that is capable of a visible possession — nothing 
that can sustain any one of the qualities or incidents of property. 
Their whole existence is in the mind alone. Incapable of any other 
mode of acquisition or enjoyment, than by mental possession or ap- 
prehension, safe and invulnerable from their own immateriality, no 
trespass can reach ihem, no tort afl^ect them, no fraud or violence 
diminish or damage them. Yet these are the phantoms which the 
author would grasp and confirm to himself, and these are what the 
defendant is charged with having robbed the plaintiff of. 

He asks, can sentiments themselves, (apart from the paper on 



113 

wliicli they are contained,) be taken in execution for a debt, or if the 
author commits treason or felony, or is outlawed, can the ideas be 
forfeited ? Can sentiments be seized, or by any act whatever be vest- 
ed in the crown ? If they cannot be seized, the sole right of pub' 
lishing them cannot be confined to the author. 

How strange and singular, says he, must this extraordinary kind 
of property be, which cannot be visibly possessed, forfeited, or seized, 
nor is susceptible of any external injury, nor consequently of any 
specific or possible remedy. 

These, and many other similar declarations, are made by Mr. 
Justice Yates, to illustrate his view of the nature of a copy-right. 
And he seems to treat the question as if the claim was to a mere 
idea not imbodied or exhibited in any tangible form or shape. No 
such pretension has ever been set up, that I am aware of, by any advo- 
cate of the right to literary property, and his view of it would hardly 
deserve a serious notice, had it not been taken by a distingushed 
judge. Lord Mansfield, in the case of Millar v. Taylor, in defining 
the nature of the right, or copy-right, says, "I use the word copy in 
the technical sense in which that name or term has been used for 
ages, to signify an incorporeal right to the sole printing and publish- 
ing of something intellectual, communicated by letters." And this is 
the sense in which I understand the term copy-right always to be 
used, when spoken of as property. 

The other objection urged by Mr. Justice Yates, that the publica- 
tion by the author is an abandonment of the exclusive right, rests 
upon more plausible ground, but is equally destitute of solidity. 

This would seem, according to his view of the case, the main point 
in the cause. The general question, he says, is, whether after a vol- 
untary and general publication of an author's works, by himself, or 
by his authority, the author has a sole and perpetual property in that 
work, so as to give him a right to confine every subsequent publica- 
tion to himself, or his assigns, for ever. 

And he lays down this general proposition; that the right of publi- 
cation must for ever depend on the claimant's property in the thing 
to be published. Whilst the subject of publication continues his own 
exclusive property, he will so long have the so!e and perpetual right 
to publish it. But whenever that property ceases, or by any act or 
event becomes common, the right of publication will be equally 
common. 

The particular terms in which Mr. Justice Yates states his propo- 
sition are worthy of notice. He puts the case upon its being a gene- 
ral publication, the meaning of which undoubtedly is, that the publi- 
cation is without any restriction, expressed or implied, as to the use to 
be made of it by the party into whose hands it might come, by pur- 



114 

chase or otherwise. Unless such was his meaning, the proposition, 
I presume, no one will contend can be maintained. Suppose an ex- 
press contract, made with a party who shall purchase a book, that he 
shall not republish it, this surely would be binding upon him. 

So if the bookseller should give a hke notice of the author's claim, 
and a purchase of a book be made, without any express stipulation 
not to republish, the law would imply an assent to the condition. And 
any circumstances from which such an undertaking could be rea- 
sonably inferred, would lead to the same legal consequences. The 
nature of the property, and the general purposes for which it is pub- 
lished and sold, show the use which is to be made of it. The usual 
and common object which a person has in view in the purchase of a 
book, is for the instruction, information, or entertainment to be 
derived from it, and not for republication of the work. It is the use 
of it for these purposes which is implied in the sale and purchase. 
And this use is in subordination to the antecedent and higher right 
of the author, and comes strictly within the maxim, sic utere tuo ut 
alienum, non ledas. But the case is not left to rest on any implied 
notice of the author's claim, and the conditions on which he makes 
it public. This is contained on the title-page of the very book pur- 
chased, and cannot be presumed to escape the notice of the pur- 
chaser. It is there in terms announced, that the author claims the 
right of publication ; and whoever purchases, therefore, does it with 
notice of such claim, and is bound to use it in subordination thereto. 
Mr. Justice Yates admits that every man is entitled to the fruits of 
his own labour ; but that he can be entitled to it only subject to the 
general rights of mankind, and the general rules of property, and 
that there must be a limitation to such right, otherwise the rights of 
others are infringed. The force of such limitation upon the right is 
not readily perceived. If the right exists, it is a common law right, 
growing out of the natural justice of the case, being the result of a 
man's own labour. He thinks the statute of Anne fixes a just 
limitation. But suppose no statute had been passed on the subject, 
where would have been the limitation? The right existing, who 
would have authority to say when it should end ? It must necessarily 
be without limitation, and it is no infringement of the rights of others. 
They enjoy it for the purpose intended, and according to the nature 
of the property. The purchaser of a book has a right to all the 
benefit resulting from the information or amusement he can derive 
from it ; and if, in consequence thereof, he can write a book on the 
same subject, he has a right so to do. But this is a very different 
use of the property, from the taking and publishing the very language 
and sentiment of the author, which constitute the identity of his 
work. 



115 

Mr. Justice Yates puts the effect of a publication upon the ground 
of intent in the author. The act of publication, says he, when 
voluntarily done by the author, is virtually and necessarily a gift to 
. the public, and he must be deemed to have so intended it. But no 
such intention can surely be inferred, when the contrary intention 
is inscribed upon the first page of the book, which cannot escape 
notice. 

The case of Percival v. Phipps, (2 Ves. and Beames, 19.) recog- 
nises the implied prohibition against publishing the work of another, 
arising from the very nature of the property. It was held in that 
case, that private letters, having the character of literary composition, 
were within the spirit of the act protecting literary property, and that 
by sending a letter the writer did not give the receiver authority to 
publish it. And this is the doctrine of Lord Hardwicke, in Pope v. 
Curl, ("2 Atk. 342.) where it is said that familiar letters may form a 
hterary composition, in which the author retains his copy-right, and 
does not, by sending them to the person to whom they are ad- 
dressed, authorize him or a third person to use them for the purpose 
of profit, by publishing them, against the interest and intention of 
the author. That by sending the letter, though he parts with the 
property of the paper, he does not part with the property of the 
copy-right in the composition. 

But how stands the case with respect to the effect of publication 
by the author, according to Mr. Justice Yates' own rule ? He says, 
" in all abandonments of such kinds of property, two circumstances 
are ncessary," — an actual relinquishing- the possession, and an inten- 
tion to relinquish it. That the author's name being inserted in the 
title-page, is no reason against the abandonment, for many of our 
best and noblest author's have published their works from more 
generous views than pecuniary profit. Some have written for fame 
and the benefit of mankind. That the omission of the author's name 
can make no difference, for if the property be absolutely his, he has 
no occasion to add his name to the title-page. He cannot escape, it 
seems, from calling the copy-right proper??/ although a mere idea, and 
resorts again to his favourite theory, that it has no indicia, no distin- 
guishing marks to denote his proprietary interest therein ; and hard, 
says he, would be ihe law, that should adjudge a man guilty of a crime 
when he had no possibility of knowing that he was doing the least 
wrong to any individual. That he could not know who was the 
proprietor of these intellectual ideas, they not having any ear marks 
upon them, or tokens of a particular proprietor. 

If, as Mr. Justice Yates admits, it is a question oi intention whether 
the author meant to abondon his work to the public, and relinquish 



116 

all private and individual claim to it, no possible doubt can exist as 
to the conclusion in the present case. Would a jury hesitate a mo- 
ment upon the question under the evidence before the court. The 
right set up and stamped upon the title-page of the book shuts the 
door against any inference that the publication was intended to be a 
gift to the public. 

Mr. Justice Yates admits that so long as a literary composition is 
in manuscript, and remains under the sole dominion of the author, it 
is his exclusive property. It would seem therefore that the idea when 
once reduced to writing, is susceptible of identity, and becomes the 
subject of property. But property without the right to use it is empty 
sound, says Mr. Justice Yates in Millar v Taylor, and indeed it would 
seem a mere mockery for the law to recognise any thing as property 
which the owner could not use safely and securely for the purposes 
for which it was intended, unless interdicted by the principles of 
morality or public policy. 

It is not necessary that I should go into any particular examination 
of the construction of the statute of Anne, or to what extent it may 
affect the common law right of authors in England, because, as I shall 
hereafter show, that statute was never considered in force in Penn- 
sylvania. The mere common law right uninfluenced by that statute 
is alone drawn in question under this branch of the case, and the 
decision in Millar v. Taylor would seem to put that question at rest 
in England, at that ^day. Mr. Justice Yates, in aid of his opinion, 
relied much upon that statute, arguing that from the title, which is, an 
" Act for the encouragement of learning by vesting the copies of printed 
books in the authors or purchasers of such copies during the times 
therein mentioned," and from the provision in the act, that the sole 
right should be vested, &c. for twenty-one years and no longer, the 
right was created, and limited by the act, and did not rest upon the 
common law. 

The other three judges however maintained, that an author''s right 
was not derived from the statute, but that he had an original perpetual 
common law right and property in his work, and that the statute was 
only cumulative, and giving aditional remedies for the violation of tiie 
right. That the preamble in the act, proceeds upon the ground of a 
right of property in the author having been violated, and that the act 
was intended as a confirmation of such right, and that from the remedy 
enacted against the violation of the right being only temporary, it 
might be argued that it afforded an implication that there existed no 
right but what was secured by the act. To guard against which 
there is an express saving in the 9th section of the act : " Provided 
ihat nothing in this act contained, shall extend, or be construed to 



117 

extend, either to prejudice or confirm any right that the said univer- 
sities or any of them, or any person or persons, have or claim to have, 
to the printing or reprinting any book or copy already printed or 
hereafter to be printed." That the words any right, manifestly meant 
any other right than the term secured by the act. It may be observed 
here, that whatever may be the just weight to be given to the argu- 
ment drawn from the term ^'■vested,'''' and the words "no longer" 
as used in the statute of Anne, and so much relied on by Mr. Justice 
Yates, it can have no application to our acts of Congress, no such 
term or provision being used. A writ of error was brought in this 
case of Millar v. Taylor, but afterwards abandoned, and the law 
was considered settled, until called in question in Donaldson v. 
Becket, (4 Burr. 2408.) which came before the House of Lords in 
the year 1774, upon an appeal from a decree of the Court of Chan- 
cery, founded on the judgment in Millar v. Taylor. 

Upon this appeal certain questions were propounded to the twelve 
judges. Lord Mansfield, however, gave no opinion, it being very un- 
usual, (from reasons of delicacy,) as the reporter states, for a peer to 
support his own judgment upon appeal to the House of Lords. This 
statement necessarily implies, however, that he had not changed his 
■opinion. There were, therefore, eleven judges who voted upon the 
questions. 

One of the questions propounded, was. Whether at common Jaw 

an author of any book or literary composition, had the sole right of 

__^rs<j>nnit«^ and publishing the same for sale, and might bring an 

action against any person, who printed, published and sold the same 

without his consent. 

Upon this question ten voted in the aflSrmative, and one in the 
negative. 

Another question was. If the author had such right originally, did 
the law take it away upon his printing and publishing such book or 
literary composition, and might any person afterwards reprint and 
sell for his own benefit, such book or literary composition, against 
the will of the author ? 

Upon this question seven v.'ere in the negative, and four in the 
affirmative. 

The vote upon these two questions settled the point, that by the 
common law, the author of any literary composition, and his assigns, 
had the sole right of printing and publishing the same in perpetuity. 

Another question propounded was. If an action would have lain 
at common law, is it taken away by the statute of Anne ? And is an 
author by the said statute precluded from every remedy, except on 
the foundation of the statute, and on the terms and conditions pre- 
scribed thereby ? 

15 



118 

Upon this question six voted in the affirmative, and five in the 
negative; and it will be perceived, that if Lord Mansfield had voted 
on this question, and in conformity with his opinion in Millar v. 
Taylor, the judges would have been equally divided. 

That the law in England has not been considered as settled in 
conformity with the vote on this last question, is very certain ; for, 
it is the constant practice in chancery, to grant injunctions to restrain 
printers from publishing the works of others ; which practice can 
only be sustained, on the ground that the penalties given by the 
statute are not the only remedy that can be resorted to. In Millar 
V. Taylor, Lord Mansfield says, the whole jurisdiction exercised by 
the Court of Chancery, since 1710, (the date of the statute of Anne,) 
against pirates of copies, is an authority, that authors had a property 
antecedent, to which the act gives a temporary additional security. 
It can stand upon no other foundation, and in the case of Bedford 
V. Hood, (7 Term, 616.) it was decided, that an author whose work 
is pirated before the expiration of the time limited in the statute, 
may maintain an action on the case for damages against the offend- 
ing part3^ Lord Kenyon says, the question is, whether, the right of 
property being vested in authors for certain periods, the common law 
remedy for a violation of it does not attach vs'ithin the time limited 
by the act of Parliament. Within those periods the act says, that 
the author shall have the sole right and liberty of printing, &c. 
Then the statute having vested that right in the author, the common 
law gives the remedy by action on the case for violation of it, and 
that the meaning of the act in creating the penalties was to give an 
accumulative remedy; and in this all the judges concur; and Mr. 
Justice Grose observes, that in the great case of Millar v. Taylor, 
Mr. Justice Yates gave his opinion against the common law right of 
authors, but he was decidedly of opinion that an exclusive right of 
property was vested by the statute for the time limited ; and he says 
that by the decision in the House of Lords, oi Donaldson v. Becket, 
the common law right of action is not considered as taken away by 
the statute of Anne, but that it could not be exercised beyond the 
time limited by that statute ; and it is worthy of notice, that this 
action on the case for damages was sustained, although the work was 
not entered at Stationers' Hall, nor the author's name affixed to the 
first publication. This, Lord Kenyon observes, was to serve as a 
notice and warning to the public, that none might ignorantly incur 
the penalties and forfeitures, given against such as pirate the works 
of others. But calling on a party who has injured the civil property 
of another, for a remedy in damages, cannot properly fall under the 
description of a forfeiture or penalty. 

From this view of the law as it stands in England, it is very clear 



119 

that previous to the statute of Anne, the perpetual common law right 
of authors was undisputed. That after that statute, in the case of 
Millar v. Tat/lor, it was held, that this common law right remained 
unaffected by the statute, which only gave a cumulative remedy. 
That the subseciuent case oi Donal hon v. Beckct, limited the right to 
the times mentioned in the statute ; but that for all violations of the 
right during that- time, all the common law remedies continued, al- 
though no entry of the work at Stationers' Hall had been made, ac- 
cording to the provisions of the statute, such entry being necessary 
only for the purpose of subjecting the party violating the right to the 
penalties given by the act. 

I do not deem it necessary particularly to inquire whether, as an 
abstract question, the same reasons do not exist for the protection of 
mechanical inventions as the productions of mental labour. The in- 
quiry is not whether it would have been wise to have recognised an 
exclusive right to mechanical inventions. It is enough, when we are 
inquiring what the law is, and not what it ought to have been, to find 
that no such principle ever has been recognised by any judicial de- 
cision. The argument was urged with great earnestness by Mr. 
Justice Yates, in Millar v. Taylor, but repudiated by Lord Mans- 
field and the other judges. With respect to copy-rights, however, the 
law has been considered otherwise, and the original common law 
right fully established, though modified in some respects by the statute 
of Anne. 

I shall proceed now to some notice of the light in which copy- 
rights have been viewed in this country. It appears from the jour- 
nals of the old Congress, (S Journal, 257.) that this question was 
brought before that body by sundry papers and memorials on the 
subject of literary proper^f/, and which were referred to a committee, 
of which Mr. Madison was one ; and on the 27th of May, 1783, the 
following resolution was reported and adopted : — 

" Resolved, That it be recommended to the several states, to se- 
cure to the authors or publishers of any new books, not hitherto print- 
ed, being citizens of the United States, and to their executors, ad- 
ministrators, and assigns, the copy-right of such books for a certain 
time, not less than fourteen years from the first publication, and to 
secure to the said authors, if they shall survive the term first mentioned, 
and to their executors, administrators, and assigns, the copy-right of 
such books, for another term of time not less than fourteen years, 
such copy or exclusive right of printing, publishing, and vending the 
same, to be secured to the original authors or publishers, their execu- 
tors, administrators, and assigns, by such lavi^s and such restrictions, 
as to the several states may seem proper." 

This right is here treated and dealt with as property already ex- 



120 

isting, and not as creating any thing which had previously no being. 
It is spoken of as something tangible, that might pass to executors 
and administrators, and transferable by assignment. And the re- 
commendation \o the states was to pass laws to secure such right. 

It must be presumed that Congress understood the hght in which 
this subject was viewed in the mother country, and it is deserving of 
notice that Mr. Madison, one of the committee, afterwards wrote the 
number in the FederaHst, where this subject is discussed, and where 
it is expressly asserted, that this has been adjudged in England to be 
a right at common law. And it is worthy of remark also, that no 
mention is here made of any right in mechanical inventions ; and 
although the arts and sciences are connected in the same clause in 
the constitution, and placed under the legislative power of Congress, 
it does not by any means follow that they were considered as stand- 
ing on the same footing. 

Several of the states had already passed laws on this subject, and 
many others, in compliance with the recommendation of Congress, 
did the same. 

The state of Massachusetts, as early as March, 178.3, passed a lavtr 
entitled " an act for the purpose of securing to authors the exclusive 
right and benefit of publishing their literary productions for twenty- 
one years." The preamble to this act shows, in a strong and striking 
manner, the views entertained at that day in this enlightened state, 
of the value of this right. " Whereas the improvement of know- 
ledge, the progress of civilization, the public weal of the community, 
and the advancement of human happiness, greatly depend on the 
efibrts of learned and ingenious persons in the various arts and 
sciences. As the principal encouragement such persons can have, 
to make great and beneficial exertions of this nature, must exist in 
the legal security of the fruits of their study and industry to them- 
selves ; and as such security is one of the natural rights of all men, 
there being no j^roperty more peculiarly a mail's Dwn, than that 
which is produced by the labour of his mind. Therefore, to 
encourage learned and ingenious persons to write useful books for 
the benefit of mankind," be it enacted, &c. The act then proceeds 
to declare, that all books, treatises, and other literary works, &c., 
shall be the sole property of the author or authors, being subjects of 
the United States of America, their heirs and assigns, for the full and 
complete term of twenty-one years from the date of their first publi- 
cation ; and certain penalties are affixed to a violation of the right, 
with a proviso that the act shall not be construed to extend in favour 
or for the benefit of any author or subject of any other of the United 
States, until the state of which such author is a subject shall have 
passed similar laws for securing to authors the exclusive right 



1-21 

and benefit of publishing their literary productions. (1 Laios 
Mass., 94.) 

This act recognises, in the fullest and most unqualified manner, 
the natural right which an author has to the productions and labour 
of his own mind. And it is worthy of notice, that the act does not 
recognise as a natural right, or in any manner provide for the pro- 
tection of mechanical inventions, thereby showing the distinction 
between mental and manual labour in the view of that legislature, 
although it is now attempted to put them on the same footing. 

The state of Connecticut had previously in the same year, (Jan., 
1783,) passed an act for the encouragement of literature and genius, 
containing the following preamble : " Whereas it is perfectly agree- 
able to the principles of natural justice and equity, that every author 
should be secured in receiving the profits that may arise from the 
sale of his works, and such security may encourage men of learning 
and genius to publish their writings, which may do honour to their 
country and service to mankind." Certain provisions are then made 
for the security of such right, which it is unnecessary here to be par- 
ticularly noticed. There is a like proviso, as in the Massachusetts 
act. That the benefit of the law is not to extend to authors, inhabit- 
ants of or residing in other states, until such states have passed 
similar laws. (Statutes of Con., 474.) This law is also confined to 
the literary productions, and in no manner extending to mechanical 
labours. 

In the colony of New- York, in the year 1786, a law " to promote 
literature" was passed, reciting, " Whereas it is agreeable to the prin- 
ciples of natural equity and justice, that every author should be 
secured in receiving the profits that may arise from the sale of his 
works, and such security may encourage persons of learning and 
genius to publish their writings, which may do honour to their 
country and service to mankind," and then making provision for 
securing to authors the sole right of printing, publishing, and selling 
their works for fourteen years, with a proviso to the 4th section of 
the act, recognising a common law right ; but leaving it open and 
unaffected, in cases not coming within the act, viz : " Provided, that 
nothing in this act, shall extend to afl^ect, prejudice, or confirm, the 
rights which any person may have to the printing or publishing of 
any books or pamphlets at common law, in cases not mentioned in 
this act." 

The state of Virginia also, in the year 1785, passed a similar law 
for securing to authors of literary works an exclusive property therein 
for a limited time. (1 Rev. Code, 534.) Like laws for the same pur- 
pose were passed by other states, which are not necessary here to be 
noticed, enough having been referred to, to show the light in which 



liJ2 

literary property was viewed in this country, and that such laws were 
passed, with a view to protect and secure a pre-existing right, 
founded on the eternal rules and principles of natural right and jus- 
tice, and recognised by the common law. 

But under the existing governments of the United States before 
the adoption of the present constitution, adequate protection could 
not be given to authors throughout the United States by any general 
law. It depended on the legislatures of the several states, and this 
led to the provisions in the present constitution, giving to Congress 
power " to promote the progress of science and useful arts, by secur- 
ing for limited times, to authors and inventors, the exclusive right to 
their respective writings and discoveries." {Con. art. 1. sect. 8.) 

It has been argued at the bar, that as the promotion of the pro- 
gress of science and the useful arts is here united in the same clause 
in the constitution, the right of authors and inventors were con- 
sidered as standing on the same footing. But this, I think, is a non 
sequitur. This article is to be construed distributively, and must 
have been so understood. For when Congress came to execute this 
power by legislation, the subjects are kept distinct, and very different 
provisions are made respecting them. 

All the laws relative to inventions, purport to be acts to promote 
the progress of useful arts. They do not use any language which 
implies or presupposes any existing prior right to be secured, but 
clearly imply that the whole exclusive right is created by the law, 
and ends with the expiration of the patent. The first law, passed in 
the year 1790, (1 Story''s ed. 80.) requires that the specifiation shall 
be so particular as not only to distinguish the invention or discovery 
from other things before known and used, but also to enable a work- 
man or other person skilled in the art or manufacture, to make, con- 
struct, or use the same, to the end that the public may have the full 
benefit thereof after the expiration of the patent term. This is the 
consideration demanded by the public for the protection during the 
time mentioned in the patent, and the books furnish no case, that I 
am aware of, where an action has been attempted to be sustained 
upon any supposed common law right of the inventor. 

But the case is quite diflerent with respect to copy-rights. All the 
laws on this subject purport to be made for securing to authors and 
proprietors such copy-right. They presuppose the existence of a 
right which is to be secured, and not a right originally created by 
the act. The security provided by the act, is for a limited time^ 
but there is no intimation that at the expiration of that time the copy 
becomes common, as in the case of an invention. The right, at the 
expiration of the time limited in the acts of Congress, is left to the 
common law protection, without the additional security thrown 



123 

around it by the statutes, and stands upon the same tooting as it did 
before the statutes were passed. The protection for a hmited time, 
by the aid of penalties against the violators of the right, proceeds 
upon the ground that the author, within that time, can so multiply 
his work, and reap such profits therefrom, as to enable him to rest 
upon his common law right, without the extraordinary aid of penal 
laws. 

In the Federalist, No 43, written by Mr. Madison who reported 
the resolution referred to, in the old Congress, this clause in the con- 
stitution is under consideration, and the writer observes, that the 
utility of this power will scarcely be questioned. The copy-right of 
authors has been solemnly adjudged in Great Britain to be a right at 
common laiv. The right to useful inventions seems with equal reason 
to belong to the inventors. The public good fully coincides in both 
cases with the claims of individuals. The states cannot separately 
make effectual provision for either of the cases, and most of them 
have anticipated the decision of this point, by laws passed at the in- 
stance of Congress. 

Although it is here said that the right to useful inventions seems 
with equal reason to belong to the inventors, as the copy-right to 
authors, yet it is not pretended that the common law equally re- 
cognises them. But the contrary is necessarily implied, when it is 
expressly said, that the copy-right has been adjudged to be a common 
law right, but is silent as to inventors' rights. 

The common law right of authors is expressly recognised by Mr. 
Justice Story, in his Commentaries. In noticing this article in the 
constitution, he says, " This power did not exist under the confedera- 
tion, and its utility does not seem to have been questioned. The 
copy-right of authors in their works, had, before the revolution, been 
decided in Great Britain to be a common law right, and it was regu- 
lated and limited under statutes passed by Parliament upon that 
subject." (3 Story's Com. 48.) If these statutes do not affect the 
right in the case now before the court, it remains and is to be viewed 
as a common law right. 

The judge in the court below who decided this case, seems to 
place much reliance on what he considers a doubt, suggested by 
Chancellor Kent, as to the existence of the common law right. Let 
us see what he does say. " It was," says he, " for some lime the pre- 
vailing and better opinion in England, that authors had an exclusive 
copy-right at common law, as permanent as the property of an es- 
tate, and that the statute of Anne protecting by penalties that right 
for fourteen years was only an additional sanction, and made in 
affirmance of the common law. This point came at last to be ques- 
tioned, and it became the subject of a very serious litigation in the 



124 

Court of K. B. It was decided in Millar v. Taylor, (1769.) that 
every author had a common law right in perpetuity, independent of 
statute, to the exclusive printing and publishing his original compo- 
sitions. The court was not unanimous, and the subsequent decision 
of the House of Lords in Donahon v. Becket, (in February 1774.) 
settled this very litigated question against the opinion of the King's 
Bench, by establishing that the common law right of action {if any 
existed) could not be exercised beyond the time limited by the sta- 
tute of Anne. (2 Com. 375. second ed.) 

It is here fully admitted that by the decision in Millar v. Taylor 
every author had a common law right in perpetuity, to the publishing 
of his original compositions, and if it was intended to intimate that 
the subsequent decision in Donahon v. Becket overruled this deci- 
sion, as to the common law right, I apprehend this must be a mis- 
take. According to the report of the case in 4 Burrow, I understand 
the decision there was by ten of the judges, that at common law an 
author had the sole right oi first printing and publishing his work. 
And by seven judges to four, that such right continued after his first 
publication. It is true, that it was decided by six to five of the judges 
that the common law right of action could not be exercised beyond 
the time limited by the statute of Anne. But with the construction 
of this statute we have no concern, if it was not in force in Pennsyl- 
vania. The settlement of the common law right is the material 
point, and that is admitted by Chancellor Kent to have been decided 
in favour of the author. There is certainly considerable obscurity in 
the report of this case, as to how far it has modified the common law 
remedy. This arises, probably,from the manner in which the questions 
were propounded by the House of Lords to the judges. 

I do not perceive how it becomes necessary in this case to decide 
the question, whether we have here any code of jaws known and 
regarded as the common law of the United States. This case pre- 
sents a question respecting the right of property, and in such cases 
the state laws form the rules of decision in the courts of the United 
States, and the case now before the court must be governed by the 
law of copy-right in the state of Pennsylvania. The complainants, 
though citizens of New-York, are entitled to the benefit of those laws 
for the protection of their property, and have a right to prosecute 
their suit in the courts of the United States. 

If by the common law of England, an author has the copy-right 
in his literary compositions, it becomes necessary to inquire whether 
that law is in force in the state of Pennsylvania. 

It was very properly admitted by the court below, on the trial of 
this cause, that when the American colonies were first settled by our 
ancestors, it was held, as well by the settlers, as by the judges and 



125 

taVvyers of England, that they brought with them, as a birthright 
and inheritance, so much of the common law as was applicable to 
their local situation and change of circumstances, and that each 
colony judged for itself what parts of the common law were appli- 
cable to its new condition. Mr. Justice Story recognises the same 
principle in his Commentaries, (vol. i, 137-140.) Englishmen, says 
he, removing to another country, must be deemed to carry with 
them those rights and privileges which belong to them in their 
native country ; and that the plantations formed in this country were 
to be deemed a part of the ancient dominions, and the subjects 
inhabiting them to belong to a common country, and to retain their 
common rights and privileges. That the universal principle has 
been, (and the practice has conformed to it,) that the common law 
is our birthright and inheritance, and that our ancestors brought 
hither with them, upon their emigration, all of it which was appli- 
cable to their situation. 

The whole structure of our present jurisprudence stands upon the 
original foundation of the common law. The old Congress, in the 
year 1774, unanimously resolved, that the respective colonies are 
entitled to the common law of England. (1 Story^s Com, 140, 
and note.) 

The colony of Pennsylvania was settled about the year 168'3, at 
which period, and down to the time of the case of Millar v. Tat/lor, 
(1769,) the whole course of the British government, as well in Par- 
liament as in the Star Chamber and Court of Chancery, proceeded, 
in relation to the regulation of copy-rights, upon the ground of an 
existing common law right in authors, and which was so universally 
acknowledged, that it was not contested in a court of justice until 
that case, and then solemnly, and upon the most mature deliberation, 
decided to be a common law right, notwithstanding the statute of 
Anne, passed in the year 1710. And the subsequent decision of 
Donaldson v. Becket, turned entirely upon the construction of that 
act, which it was supposed limited the remedy to the time prescribed 
in the act for the protection of the copy-right : so that at the time of 
the settlement of Pennsylvania, and for nearly a century thereafter, 
the common law right, with all the common law remedies attached 
to it, was the received and acknowledged doctrine in England. And 
if the common law was brought into Pennsylvania by the first settlers, 
the law of copy-right formed a part of it, and was in force there, and 
has so continued ever since, not having been abolished or modified 
by any legislation in that state. But the existence of the common 
law in Pennsylvania is not left to inference upon the general princi- 
ples applicable to emigrants, before alluded to ; there is positive legis- 
lation on the subject. 

18 



126 

We find, as early as the year 1718, a law in that colony, with a 
recital, "Whereas King Charles the Second, by his royal charter to 
William Penn, for erecting this country into a province, did declare 
it to be his will and pleasure, that the laws for regulating and 
governing of property within the said province, as well for the 
descent and enjoyment of lands, as for the enjoyment and succession 
of goods and chattels, and likewise as to felonies, should be and 
continue the same, as they should be for the time being by the 
general course of the law in the kingdom of England, until the said 
laws shall be altered by the said William Penn, his heirs and assigns, 
and by the freemen of the said province, their delegates or deputies, 
or the greater part of them. And whereas it is a settled point, that 
as the common law is the birthright of all English subjects, so it 
ought to be their rule in the British dominions. But acts of parlia- 
ment have been adjudged not to extend to these plantations, unless 
they are particularly named in such. Now therefore," &c. And certain 
statutes relating to crimes are adopted. And this question came 
under the consideration of the Supreme Court of that state in the 
case of Morris''s Lessee v. Vanderen, (1 Dal. 64.) in the year 1782; 
and Chief Justice M'Kean, in pronouncing the judgment of the 
court, says> " This state has had her government for above a hundred 
years, and it is the opinion of the court, that the common law of 
England has always been in force in Pennsylvania. That all statutes 
made in Great Britain before the settlement of Pennsylvania, have 
no force here, unless they are convenient, and adapted to the cir- 
cumstances of the country, and that all statutes made since the set- 
tlement of Pennsylvania, have no force here, unless the colonies are 
particularly named ;" and he adds, that the spirit of the act of 1718 
supports this opinion. 

With respect to English statutes, which have been considered in 
force in Pennsylvania, we have the most satisfactory evidence in the 
report of the judges of the Supreme Court of that state, made under 
an act of the legislature, passed April 7, 1807 ; (3 Binney, 395.) by 
which the judges were required to examine and report which of the 
English statutes are in force in that commonwealth, &c. ; and upon 
this subject the report states, " With respect to English statutes, 
enacted since the settlement of Pennsylvania, it has been assumed as 
a principle, that they do not extend here, unless they have been re- 
cognised by our acts of assembly, or adopted by long continued 
practice in courts of justice. Of the latter description there are very 
few, and those it is supposed were introduced from a sense of their 
evident utility. As English statutes, they had no obligatory force, 
but from long practice they may be considered as incorporated with 
the laws of our country." 



127 

From this review of the law, I think I have shown, thst by the 
common law of England, down at least to the decision in the case of 
Donaldson v. Beckett an author was considered as having an ex- 
clusive right in perpetuity to his literary compositions. That this 
right, as a branch of the common law, was brought into Pennsylvania 
with the first settlers, as early as the year 1682. That whatever ef- 
fect and operation the statute of Anne may have been deemed to have 
had upon the common law in England, that statute never having 
been in force in Pennsylvania, the common law right remains unaf- 
fected by it ; and with this view of the law, and the rights of an 
author, I proceed to consider the acts of Congress which have been 
pcfssed on this subject. 

Observing, in the first place, that we are bound to presume that 
Congress understood the nature and character of this claim of authors 
to the enjoyment of the fruits of their literary labours, and the ground 
upon which it rested. This is useful and necessary to conduct us to 
a right understanding of their legislation. A knowledge of the mis- 
chief is necessary to a just and correct view of the remedy intended 
to be applied. 

But the knowledge of Congress on this subject is not left open to 
presumption. The question as to its being an exclusive and perpetual 
right was brought directly to the view of Congress. 

Three acts have been passed on this subject, and being not only in 
pari materia, but connected with each other by their very titles and 
objects, are to be construed together, and explained by each other. 

The last act on the subject was passed in the year 1831, and is en- 
titled an act to amend the several acts respecting copy-rights, 
(approved February, 1831.) And the report of the judiciary com- 
mittee, to whom the subject was referred, shows in what point of 
light the subject was presented to Congress. 

Your committee, says the report, believe that the just claims of 
authors require from our legislation a protection not less than what 
is proposed in the bill reported. From the first principles of pro- 
prietorship in property, an author has an exclusive and perpetual right, 
m preference to any other, to the fruits of his labour. Though the 
nature of literary property is peculiar, it is not the less real and 
valuable. If labour and effort in producing what before was not 
possessed or known, will give title, then the literary man has title, 
perfect and absolute, and should have his reward. 

The object of the law, and to which the attention of Congress 
was specially drawn, was the protection of property, claimed and 
admitted to be exclusive and perpetual in the author. 

It may be useful preliminarily to notice a few of the settled rules, 
bj which statutes are to be construed. In construing statutes, three 



128 

points are to be regarded : the old law, the mischief, and tfee' 
remedy — and the construction should be such, if possible, to sup- 
press the mischief and advance the remedy. (1 Black. Com. 87 — Bac. 
Abr., Stat. I. pi. 31-2.) An affirmative statute does not abrogate 
the common law. If a thing is at common law, a statute cannot 
restrain it, unless it be in negative words. (Ploivd. 113. 2 KenVs 
Com. 462. 2 Mason, 451. 1 Inst. 111. 115. 10 Mod. 118. Bac. 
Stat. G.) When a statute gives a remedy, where there was one by 
the common law, and does not imply a negative of the common law 
remedy, there will be two concurrent remedies. In such case the 
statute remedy is accumulative. (2 Burr. 803-5. 2 Inst. 200. Com. 
Dig., Action upon Statute C.) 

Considering the common law right of the author established, and 
with these rules of construing statutes kept in view, I proceed to the 
consideration of the acts of Congress. 

The first law was passed in the year 1790, (1 vol. Stones edit, of 
Laws U. S. 94,) and is entitled " An act for the encouragement of 
learning, by securing the copies of maps, charts, and books to the 
authors and proprietors of such copies, during the times therein men- 
tioned." 

The first section declares, that the author of any book or books 
already printed, being a citizen of the United States, and who has not 
transferred the copy-right to any other person, and any other person, 
being a citizen of the United States, &c. who hath purchased, or legally 
acquired the copy-right of such book, in order to print, reprint, pub- 
lish, or vend the same, shall have the sole right and liberty of print- 
ing, reprinting, publishing, and vending the same for fourteen years, 
from the recording the title thereof m the clerk's office, as hereinafter 
directed. The like provision is made with respect to books or manu- 
scripts not printed, or thereafter composed. The title and this section 
of the act obviously consider and treat this copy-right as property — 
something that is capable of being transferred ; and the right of the 
assignee is protected equally with that of the author ; and the object 
of the act, and all its provisions, purport to be for securing the right. 
Protection is the avowed and real purpose for which it is passed. 
There is nothing here admitting the construction, that a new right 
is created. The provision in no way or manner deals with it as such. 
It in no manner limits, or withdraws from the right any protection it 
before had. It is a forced and unreasonable interpretation, and in 
violation of all the well settled rules of construction, to consider it 
as restricting, limiting, or abolishing any pre-existing right. Statutes 
are not presumed to make any alteration in the common law further 
or otherwise than the act expressly declares, and therefore when the 
act is general, the law presumes it did not intend to make any altera-. 



129 

liolij for if such was the intention tlie legislature would have so 
expressed it. (11 Mod. 148. 19 Vin. 512. Stat. E. 6. pi. 12.) And 
hence the rule as laid down in Plowden. If a thing is at common 
law, a statute cannot restrain it unless it be in negative words. It is 
in every sense an affirmative statute, and does not abrogate the com- 
mon law. 

The cumulative security or protection given by the statute, attaches 
from the recording of the title of the book in the clerli's office of the 
District Courts where the author or proprietor shall reside. If the 
statute should be considered as creating a new right, that right vests 
upon the recording the title. This is the only pre-requisite or con- 
dition precedent to the vesting the right — whatever it is that is given 
by the statute. And the other requirements in the third and fourth 
sections, of publishing in the newspapers within two months from the 
date of the record, and delivering a copy of the book to the secre- 
tary of state within six months of the publication, cannot be con- 
strued as pre-requisites or conditions precedent to the vesting. These 
provisions cannot be considered in any other light than as directory. 
In no other view can these sections of the law be made consistent 
with the provisions of the first section. The benefit of the act, so 
far as respects the exclusive right, takes eflfect from the time of 
recording the title in the clerk's office. But the publication in the 
newspaper may be made at any time within two months, and the 
copy delivered to the secretary of state within six months. 

What would be the situation of the author if his copy-right should 
be violated before the expiration of the time allowed him for these 
purposes ? Would he have no remedy ? The second section declares 
in^terms, that if any person, from and after the recording the title, 
shall without the consent of the author or proprietor, print or reprint, 
&c., he thereby incurs the penalties given by the act. Both the 
right and the remedy therefore given by the act attach on the record- 
ing of the title ; and this construction is not at all affected by any 
thing contained in the third section of the act, which declares that 
no person shall be entitled to the benefit of this act, unless he shall 
have deposited a printed copy of the title in the clerk's office. 

This is in perfect harmony with the first and second sections, and 
although the requirement to publish a copy of the record in the news- 
paper, is in the same section, it is in a separate and distinct clause, and 
no more required to be considered a pre-requisite, than if it was in a 
distinct section ; and so it was considered by Mr. Justice Washington 
in Ewer v. Coxe, (4 Wash. C. C. Rep. 690.) and he also in that case 
considered the requirement in the 4th section to deliver a copy to 
the secretary of state as directory, and not as a condition ; and, in- 
deed, the result of his opinion was, that if the author's copy-right 



130 

depended upon the act of 1790, it would be complete by a deposit 
of a copy of the title in the clerk's office. But that the act of 1802, 
not only added another requisite, viz. causing a copy of the record to 
be inserted at full length in the title-page, but made the publication 
in the newspaper, and the delivery of a copy of the book to the sec- 
retary of state, pre-requisites, although not made so by the act of 
1790. Mr. Justice Washington is fully supported in his construction 
of the act of 1790, by the case of Nichols v. Ruggles, (3 Day, 145.) 
decided in the Supreme Court of Errors of the state of Connecticut, 
where it is held that the provisions of the statute which require the 
author to publish the title of his book in a newspaper, and to deliver 
a copy of the work to the secretary of state, are merely directory, and 
constitute no part of the essential requisites for securing the copy- 
right. This case was decided in the year 180S, and I do not find 
any reference to the act of 1802. This can only be accounted for 
upon the supposition that in the opinion of the counsel and court, 
this act did not at all affect the construction of the act of 1790. 
For had it been supposed that the act of 1802 made the publication 
in a newspaper, and a delivery of a copy of the work to the secretary 
of state, pre-requisites to the vesting of the copy-right, it would ne- 
cessarily have led to a different result on the motion for a new trial. 
Judge Hopkinson, who tried the cause now before the court, thinks 
the act of 1790 will not admit of the construction given to it by Judge 
Washington, but that under that act the publication in a newspaper, 
and delivery of a copy of the work to the secretary of state, are pre- 
requisites to the establishment of the right; and such I understand to 
be the opinion of the majority of this court, by which the construc- 
tion of the act of 1790 by Judge Washington is overruled. 

I have already attempted to show that this construction of the act 
of 1790, cannot be sustained. Nor do I think, that the act of 1802 
will aid that construction of the act of 1790 ; and in this, I understand, 
my brother Mc Lean concurs, so that upon this question as to the 
effect of the act of 1S02, upon the act of 1790, the court is equally 
divided, and the decision of the cause rests upon the act of 1790. 
A brief notice, however, of the act of 1802,(2 Story^s ed. Laws V. S. 
8G6.) may not be amiss. 

It purports, so far as it relates to the present question, to be a sup- 
plement to the act of 1790, and declares that the author or proprietor 
of a book, before he shall be entitled to the benefit of that act, shall, 
in addition to the requisites enjoined in the third and fourth sections 
of said act, give information, by causing a copy of the record, re- 
quired to be published in a newspaper, to be inserted at full length, 
in the title-page, or in the page immediately following the title-page 
of the book. It is to be observed, that this purports to be a supple- 



131 

mentary act, the office of which is only to add something to the ori- 
ginal act ; but not to alter or change the provisions which it already 
contains. It leaves the original act precisely as it was, and only 
superadds to its provisions the matter of the supplement, and both, 
when taken together, will receive the same construction as if originally 
incorporated in the same act. This is the natural and rational view 
of the matter. Suppose this new requisite had been in the original 
act, how would it stand ? If it was in a separate and distinct section, 
it would run thus : that the author, before he shall be entitled to the 
benefit of this act, shall insert at full length, in the title-page of the 
book, a copy of the record of the title. This would not change the 
construction of the act as to the pubhcation in the newspaper, or de- 
livery of a copy of the book to the secretary of state ; nor would it 
have any such effect if it followed immediately after the pre-requisite 
of depositing a printed copy of the title of the book in the clerk's 
office. And this would have been the natural place for the provision 
if it had been inserted in the original act. 

Judge Washington, in Ewer v. Coxe, says that the supplemental 
act declares, that the persons seeking to obtain this right shall per- 
form this new requisition, in addition to those prescribed in the third 
and fourth sections of the act of 1790, and that he must perform the 
whole before he shall be entitled to the benefit of the act. I find no 
such declaration in the act. The second section, which relates to 
prints, does contain this declaration ; but it has no application to 
books. 

If the act of 1802 is intended as a legislative construction of the 
act of 1790, and is clearly erroneous, it cannot be binding upon the 
court. 

The act of 1831, being in pari materia, may be taken into conside- 
ration, in construing the previous acts which it purports to amend, 
and we find in this act only two pre-requisites imposed upon an 
author to entitle him to the benefit of the act, viz : to deposit a 
printed copy of the title of the book in the clerk's office of the Dis- 
trict Court of the district wherein the author or proprietor shall re- 
side, and to give information of the copy-right being secured, by in- 
serting on the title-page, or page immediately following, the entry 
therein directed, viz: " Entered according to the act of Congress," 
&c., and these being pre-requisites under the former laws, it is fairly 
to be concluded that they were the only pre-requisites, and that the 
other requirements are merely directory; and if so, the complainants 
in the court below have shown all the acts of Congress require to vest 
the copy-right. The title has been recorded in the clerk's office, and 
a copy of the record inserted in the title-page of the book. 

But if the complainants in the court below have not made out a 



132 

complete right under the act of Congress, there is no ground upot* 
which the common law remedy can be taken from them. If there be 
a common law right, there certainly must be a common law remedy. 
The statute contains nothing in terms having any reference to the 
common law right, and if such right is considered abrogated, limited, 
or modified by the acts of Congress, it must be by implication ; and 
to so construe these acts is in violation of the established rule of con- 
struction, that when a statute gives a remedy in the affirmative, with- 
out a negative, expressed or implied, for a matter which was action- 
able at common law, the party may sue at common law as well as 
upon the statute. (1 Chitty's Plead. 144.) This is a well settled 
principle, and fully recognised and adopted in the case of Almy v. 
Harris, (5 Johns. 175.) Whatever effect the statute of Anne may 
have had in England, as to limiting or abridging the common law 
right there, no such effect upon any sound rules of interpretation can 
grow out of our acts of Congress. 

There is a wide difference in the phraseology of the laws. The sta- 
tute of Anne contains negative words. It declares that the author 
shall have the sole right and liberty of printing, &c. for the time 
contained in the statute and no longer, and these are the words upon 
which the advocates for the limitation of the common law right 
m.ainly rest. And it was for a long time considered by the ablest 
judges in England, that even these strong words did not limit or 
abridge the common law right, and the question at this day is not 
considered free from doubt. 

This act, and the construction which it had received in England, 
were well known and understood, when the act of Congress was 
passed, and no such limitation is inserted or intimated, or any matter 
at all repugnant to the continuance of the common law right, in its 
full extent. These laws proceed on the ground that the common law 
remedy was insufficient to protect the right, and provide additional 
security by means of penalties, for the violation of it. Congress 
having before them the statute of Anne, and apprized of the doubt 
entertained in England, as to its effect upon the common law right, 
if it had been intended to limit or abridge that right, some plain and 
explicit provisions to that effect would doubtless have been made, and 
not having been made, is, to my mind, satisfactory evidence that no 
such effect was intended. 

If the present action was to recover the penalties given by the 
statute, it might be incumbent on the appellants to show that all the 
requirements in the acts of Congress had been complied with. This 
would be resorting to the new statutory remedy, and the party must 
bring himself within the statute in order to entitle him to that remedy. 
But admitting that the right depends upon the statute, and is limited 



133 

to the time therein prescribed, the remedy by injunction continues 
during that time. This is admitted by Mr. Justice Yates in Millar v. 
Taylor. The author, says ho, has certainly a property in the copy 
of his book, during the term the statute has allowed, and whilst that 
term exists it is like a lease, a gran., or any other common law right, 
and will equally entitle him to all common law remedies for the en- 
joyment of that right. He may, I should think, file an injunction bill 
to stop the printing. But I may say with more positiveness, he might 
bring an action to recover satisfaction for the injury done, contrary 
to law, under the statute. And the same doctrine is laid down by the 
whole court in Beckford v. Hood, (7 Term R. 616.) Lord Kenyon 
says, the statute vests the right in authors for certain periods, and 
within those periods, the act says the author shall have the sole right 
and liberty of printing, &c. And, the statute having vested the right 
in the author, the common law gives the remedy by action on the 
case for a violation of it, and the act, by creating the penalties, 
meant to give an accumulative remedy. 

The language in the statute of Anne, which is considered as vesting 
the right, is the same as in the act of Congress. In the former, it is 
considered as necessarily implied in the declaration, that the author 
shall have the sole right during such time, &c. And in the act of 
Congress there is the same declaration, that the author shall have the 
sole right of printing, &c. from the time of recording the title in the 
clerk's office. The right being thus vested at that time, draws after 
it the common law remedy, and there is no more reason for contend- 
ing that the remedy given by the statute supersedes the common law 
remedy under the act of Congress, than under the statute of Anne. 
The statute remedy is through the means of penalties in both cases. 
The term for which the copy-right is secured in the case now before 
the court, has not expired, and according to the admitted and settled 
doctrine in England under the statute of Anne, the common law 
remedy exists during that period. 

Upon the whole, in whatever light this case is viewed, whether as 
a common law right, or depending on the acts of Congress, I think 
the appellants are entitled to the remedy sought by the bill, and that 
the decree of the court below ought to be reversed, the injunction 
made perpetual, and an account taken according to the prayer in 
the bill, without directing an issue to try any matter of fact, touching 
the right. 



17 



i34 

Mr. Justice Baldwin. — The bill of the complainants prays for an 
injunction, an account, and for general relief. The bill states, the 
answer does not deny, and the fact is admitted, that the complainants 
have been in the quiet, peaceable, and unquestioned possession of a 
copy-right to the twelve volumes of Wheaton's Reports, from the 
time of iheir first pul lication till the publication of the third volume 
oi Condensed Reports, by the respondents, in February, 1831, which 
possession has been had and continued under claim and colour of 
title. The first volume of Mr. Wheaton's Reports was entered for 
copy-right in the office of the clerk of the District Court of Pennsyl- 
vania, in December, 1816, and a copy of the entry duly published on 
the title-leaf; the succeeding volumes were entered in the same 
manner in each successive year, till 18*27, when Mr. Wheaton ceased 
to be the reporter of the Supreme Court. 

In May and June, 1830, the first volume was again entered in the 
clerk's office of tie Southern District of New-York, in order to secure 
the copy-right for a further term of fourteen years, and in October 
following there was deposited in the department of state a copy of 
the book ; the publication in the newspapers, according to laiv, was 
also made immediately after the entry with the clerk. In June, 1828, 
Mr. Peters, one of the respondents, issued his proposals for conden- 
sing the reports of cases decided by the Supreme Court, in which he 
declared that " it is not considered that the work now announced, and 
part of the materials for which are arranged, will interfere with the 
interests of those gentlemen who have preceded the reporter in the 
station he has the honour to hold." " The legal rights of the pro- 
prietors of those most able and valuable works will be carefully re- 
spected." " Nothing will be inserted in the contemplated publica- 
tion but matters which are of public record, and which from their 
very nature cannot be the subject of literary property." There does 
not appear in the pleiHinr, exhibits, or evidence in the case, any de- 
claration of any intention by Mr. Peters to invade the legal rights of 
any former reporters, or any allegation that they had not complied 
with the requisites of the law, which were necessary to secure to them 
the benefits conferred ; he seems to have viewed his publication as 
calculated to increase the demand for the original reports, as well as 
their reputation, and that the nature of his work would not interfere 
with the rights of those who were their proprietors. His first an- 
nunciation of a denial of any right in the complainants, ap- 
pears to have been on or about the time of publishing the third 
volume of the Condensed Reports, embracing Mr. Wheaton's first 
volume, which was in February, 1831, after the complainants had 
made claim to a second term of copy-right in that volume, by a se- 
cond entry ; Mr. Donaldson claiming as purchaser and proprietor for 



135 

A valuable consideration ; and Mr. Wheaton claiming, as the author, 
3.1! the right not vested in Mr. Donaldson by purchase. They and 
those claiming under them had been left in the unmolested enjoy- 
ment of their claims under^olourof right till that time ; since which 
die respondents have denied to them any legal or equitable right of 
property in any of the volumes of reports criginally published by Mr. 
Wheaton, It is not pretended that these books of reports were not 
duly entered with the clerk of the District Court, nor that a copy of 
such entry was not duly certified and published on the title-leaf of each 
volume, according to the requisitions of law. The respondents op- 
pose the prayer of the bill solely on the ground that there was no 
publication in the newspapers when the first record was made, and 
that no copy of the books was deposited in the office of the secretary 
of state, as required by the third and fourth sections of the act of 1790 ; 
and also because the Condensed Reports do not violate any right of 
property in the complainants to the reports of the decisions of the 
Supreme Court, they not being the subject of copy-right. 

Conceding, for the present, that no publication or deposit has been 
proved to have been made within the time required, the first question 
which arises is, whether there is any equity in the complainant's bill, 
which entitles him to any relief. 

The course and principles of equity, on applications for injunctions 
to prevent the violation of the rights of literary property, have been 
clearly defined and well settled by courts of chancery in England 
and this country, and are enjoined on the observance of the courts 
©f the United States, by the acts of Congress of 1819 and 1831. 
The uniform rule of courts of equity, is to award an injunction in 
favour of a party claiming a copy-right or a patent by colour of title, 
if he has been in the long continued possession, and the injunction 
will be continued till the party contesting the right shall show that it 
is mere colour. Though the right is doubtful, the court will not dis- 
solve the injunction at the hazard of the right being established at 
law. No terms will be imposed on the party applying for protection 
of his possession, nor will the court permit the possession to be 
changed, till, on a trial of the right at law, the author or proprietor 
fails to establish it. The length of time during which an author has 
been in the enjoyment of his copy-right or invention, is very im- 
portant. If his possession has been only of recent date, he will not 
be allowed an injunction in a doubtful case of right, or entitled to its 
continuance, unless he proceeds to establish his right at law ; but 
where the possession has been of some duration, especially where it 
has been long held and peaceably continued, it will be protected, 
though no proceeding is had at law. The cases on this subject are 
full and conclusive in establishing the course and principles of courts 



136 

of equity. (6 Ves. 707. 710. 14 Ves. 132. 136. 3 Mer. 628. S 
Russ. 401. 3 Cond. Ch. Rep. 167, &c. Coop. Eq. 156. Eden, 87. 
205, 206. 9 J. R. 567. 570. 583. 589. 4 Wash. C. C. 260. 489. 
1 Paine, 449. S. P. 12 Whea. 198, 199.) The rules established in 
these cases, are of unquestioned authority, and cover the whole 
ground of the complainant's case as to all the volumes of Wheaton's 
Reports, the last of which was entered for copy-right in June, 1827, 
nearly four years before any actual or threatened invasion of the 
quiet and exclusive enjoyment under colour of title. No case has 
occurred where such a possession has been held insufficient to 
entitle the party to an injunction, before any trial at law or suit for 
damages. The injunction will be perpetuated without any directions 
to bring an action. (8 Ves. 227. Mit. Plead. 128, 129.) It is in the 
discretion of the court to order a suit or an issue, or not, according 
to the circumstances of the case. (17 Ves. 424.) But the establish- 
ment of the legal right has never been held requisite, unless the 
copy-right is recent, or the author has acquiesced for a long time 
after the infraction. These are cases peculiarly favoured in courts 
of equity, especially when purchasers for a valuable consideration, 
without notice of any dispute about, or doubts of the right, are con- 
cerned. In Morris v. Kelly, the plaintiff claimed as a purchaser, 
though he could not prove that the assignment was in writing ; but 
the chancellor said, "I shall assume that your title is regular, until 
they show the contrary," (1 Jac. and W. 400, 401.) and granted the 
injunction, although the court of K. B. had decided that an assignee 
could not recover damages, unless the assignment was in writing. 
(3 M. and S. 7. 9.) In Maivman v. Tegg, the chancellor observed, 
" Whether the title be a good legal title in them or not, is one ques- 
tion ; but it appears to me they have a complete equitable title, and 
if the defendants are to have the benefit of the delay which bringing 
the action may occasion, they ought to be directed to admit the 
legal title upon the trial of the action, because a court of law cannot 
try the equitable title." (2 Russ. 400,401. 3 Cand. Ch. 170.) The 
injunction was continued. 

So an injunction will be awarded in favour of a purchaser, though 
it is doubtful whether the defendant's work is a piracy or a fair abridg- 
ment. (1 Blacks. Com. 451.) 

But an injunction bill cannot be granted in favour of an author 
against one who publishes the book under a license from him, or a 
gift of the manuscript ; nor against a party who has been led into 
jhe publication by the encouragement and acquiescence of the 
author. {Jacob, 311, Cond. Ch. 14. 17, 18.) 

Adhering to the principle that time and acquiescence shall avail 
SD author, whose long possession under a claim of copy-right has 



1^1 

been invaded, and entitle him to an injunction without a trial of the 
legal right, courts of equity apply it in favour of defendants when 
authors suffer time to run on the violation of their rights. " Where 
ten have been allowed to publish, the court will not restrain the 
eleventh." " A court of equity frequently refuses an injunction 
where it acknowledges a right, when the conduct of the party has 
led to a state of things which occasions the application, and there- 
fore will refuse or dissolve an injunction without saying in whom the 
right is, (4 Cond. Ch. 148.) or, when the copy-right is admitted, if 
there has been a violation for fifteen years. (19 Ves. 447-8.) 

After such a course of adjudication in equity, I may assume it as 
a settled rule, that in a case like this, no chancellor would inquire 
into the legal title of the complainants, but would direct it to be ad- 
mitted on an issue to ascertain the extent of the piracy. At all 
events, it is unprecedented to refuse all relief in a suit between a pur- 
chaser in quiet possession claiming by law on the one side, and on 
the other a party who sets up no particular right of his own, but 
contents himself with a general denial of any right in the other. If 
the parties in the present case were reversed, and the respondents 
sought to enjoin the complainants from proceeding to assert their 
legal rights by suits at law, by actions for the penalties under the act 
of 1790, or the destruction of the work which was an alleged piracy, 
the possession of Messrs. Wheaton and Donaldson would be a com- 
plete answer to a bill founded on the common right asserted by 
Messrs. Peters and Grigg. " An injunction for such a purpose, and 
under such circumstances, would be unprecedented. The common 
right must be first legally established, and the defendants must be 
first duly ousted of their pretension and possession by due course of 
law. (7 Johns. Ch. 165.) 

An injunction will not be granted to restrain a party who has been 
in possession for any length of time, who claims by a title adverse, 
(7 Johns. Ch. 165.) till the right is first settled at law. {6 Johns. Ch. 20. 
19 Ves. 44. 47, 48. 1 Coxe, 182. 6 Ves. 51.) ' A plaintiff who states 
such a case, puts himself out of court as to the injunction. (4 Johns. 
Ch. 22.) It is a proper remedy to protect a possession till it appears 
to be against right, but it is never used to disturb a possession under 
claim and colour of right ; especially a right asserted under an act 
of Parliament. (1 Ves. jr. 476.) There are no cases in which 
courts of equity administer this remedy more liberally, than in favour 
of authors and inventors, whose rights are easily invaded, without a 
possibility of their exhibiting to a jury the whole extent of damage 
which they may have sustained by their invasion. (17 Ves 424.) 
Hence has arisen the fixed rule of equity, that long possession under 
elaim and colour of title, is sufficient to entitle an author or inventor 



138 

to an injunction without a decision as to the right; the great object 
is to protect possession, not merely the settled right. Possession is 
in all cases prima facie evidence of a right of possession, and is 
never disturbed at law or in equity, until better evidence appears in 
an adverse party. The evidence of possession varies according to 
the subject matter ; the proprietor of a book can have no other evi- 
dence of possession or property, than that he has enjoyed the exclu- 
sive right of printing and selling it, without any attempt to question 
or disturb it. This is as much actual possession as the occupation 
of land or the use of a chattel, and gives him all right incident to 
possession as evidencing a title to property. 

Among these rights, none is more undoubted than the remedy by 
injunction, till his possession is shown to be merely colourable. In 
resting their case on the legal objections to the copy-right claimed 
by the complainants, the counsel for the respondents seemed to have 
overlooked these principles, which prevail in all courts of equity, as 
well as the express directions of the acts of Congress, which 
authorize the federal courts " to grant injunctions according to the 
course and principles of courts of equity, to prevent the violation of 
the rights of authors or inventors, secured to them by any laws of 
the United States, on such terms and conditions as the said courts 
may deem fit and reasonable." (3 Story''s ed. 1719.) This is an express 
adoption of the rules by which possession by colour and claim of 
title is protected by injunction, equally with possession by a perfect 
title acquired by a compliance with all the requisites and directions 
of the law. 

No court of equity has ever made any distinction between the 
two classes of cases, or has ever entered into the inquiry whether 
the party has strictly followed the law, if in his bill he presents a 
case of apparent equity, of prima facie right, accompanied by long 
possession, peaceable and uninterrupted, while the other party rests 
merely on his own common right, simply denying the right of the 
complainant. Nor can a court of the United States refuse an 
injunction in such a case, without directly contravening all setded 
principles. The settled course of equity has also become statute 
law, leaving no discretion in the court, except to decide whether the 
case comes before them under such circumstances as bring it within 
the rules settled by adjudications in equity, and the terms on which 
the injunction shall be granted. 

The acts of Congress which secure to authors and inventors their 
property, superadd penalties in the one case, and treble damages in 
the other, to the ordinary remedies which are prescribed for the 
violation of the rights to real and personal property. This arises 
from the known inadequacy of the ordinary remedies which limit 



139 

the right of the injured party to a recovery of the amount of actual 
injury he sustains by the violation of his right. To place the pro- 
prietors of literary property on a worse footing in courts of equity, 
than the owners of other property, would be not only subversive of 
all principles of justice, but in direct repugnance to the spirit of the 
constitution and laws, which make authors and inventors the favour- 
ites of national legislation, and deem the violators of their rights 
public offenders. Literary piracy is an offence subjecting the violator 
to a penalty, accruing one half to the party injured, the other half to 
the United States. When such is the language and spirit of the 
laws of 1790, 1802, and 1831, that the violation of this right is 
deemed a. public offence, as well as a private injury, I find a strong 
assurance that in the eye of equity, literary property is at least as 
sacred as any other; nor can I for a moment doubt, that the plain 
course of its courts and high duty, is to impart to it the fullest 
degree of protection which is afforded to property less exposed to 
invasion, and to guard from impending danger a class of suitors 
who, from the nature of their rights, and the mode of their violation, 
can have no remedy at law which is at all efficient or adequate. 

The present is one of the strongest cases which can occur. As to 
the first volume of Wheaton's Reports, the complainants had been in 
the quiet enjoyment of the copy-right for the full term of fourteen 
years ; the book had been entered a second time, and every direc- 
tion of the acts of 1790 and 1802 had been literally and strictly com- 
plied with to the letter, before any actual or threatened invasion or 
denial of their right. The respondents do not deny that the copy- 
right has been duly secured for a second term of fourteen years, if it 
was so secured for the first ; their whole case rests on their legal ex- 
ceptions to the validity of their right during the first term. They do 
not allege the want of notice, or that they have interfered with the 
rights and possession of the complainants, through any mistake, ig- 
norance, or misapprehension, nor do they assert in themselves any 
exclusive right to the matter taken from Mr. Wheaton's Reports, and 
inserted in their work, or that he had pirated from others what he 
claims as his own property. Still less do they pretend that the omis- 
sion on his part to make publication in the newspapers, or to deposit 
a copy in the office of the secretary of state, has led them into any 
error or mistake in relation to the pretensions or claims of Mr. Whea- 
ton to the copy-right. The prospectus of 1828 shows the most ample 
notice in fact. So far from evincing a disposition, or containing a 
threat, to violate the rights of property in the reports, or to injure 
their sale, it makes and repeats the assurance that they will be re- 
spected, and the demand for the books enlarged ; thus furnishing the 
most conclusive answer to any allegations of delays in applying for 



140 

an injunction, or any tacit acquiescence in the violation of the rights of 
the complainants, which might otherwise have been made if the pros- 
pectus of 1828 had avowed an intention of denying their right. The 
present suit was brought in about three months after this intention 
became manifested, by the publication of the third volume of the Con- 
densed Reports. So that no such possession in the respondents, as 
would afford any objection to the relief sought, can be set up by 
them. 

If this were a suit at law to recover damages for the piracy of the 
matter contained in the first volume of Wheaton's Reports, I could 
not doubt that the court would instruct the jury that it was too late 
to contest the copy-right during the first fourteen years, after its 
peaceable enjoyment during the whole term, and that its renewal 
after all the requisites enjoined on authors had been fully complied 
with some months before any invasion by the defendants, was suffi- 
cient to entitle them to some damages. 

In a suit at law for pirating a book, the first publisher may recover 
damages, though he has obtained the materials improperly and pro- 
cured the copy-right by abusing his trust ; he has a right to the copy, 
and to an action against the person who publishes it without his 
authority. " It may be a ground in equity, as between the person 
entitled and the person who first published it, but it does not destroy 
the right of the latter to sue a person pirating that right." (4 Espin. 
169.) A tenant who had been in possession of land for fourteen 
years under a void lease, but who had received a valid one for a new 
term, and remained in possession, would, to all intents and purposes, 
be deemed in law to have been in the lawful possession during the 
whole period of his occupation, as well against the lessor, as a 
stranger or trespasser. On an application to a court of equity, to 
protect his possession against an adverse pretension, it would not 
listen to mere legal technical objections to the title, but would leave 
the party opposing the injunction to proceed at law to invalidate the 
right of the complainant ; when this would be done, the injunction 
would be dissolved of course. 

In a case of an invasion of the possession of literary property, the 
call for the interference of a court of equity is much more imperious 
than in any other, the prompt and summary remedy of injunction 
being the only adequate one. There is also a powerful reason, in 
favour of the most liberal allowance of the healing effects of time 
and acquiescence, in viewing mere legal or formal defects in copy- 
rights and patents for inventions, growing out of the provisions of 
the acts of Congress. 

The fourth section of the act of 1802, imposes a penalty of one 
hundred dollars on any person who shall insert in any book, or im- 



141 

press upon it, that the same has been entered according to the act of 
Congress, if they have not legally acquired the copy-right of such 
book, to be recovered one half to the use of the person who may 
sue for it, and the other half to the use of the United States, provided 
the action be commenced within two vpfir* fiom the time the cause 
of action may have arisen. (2 Story, 867, 868.) 

The same provitsion is contained in the eleventh section of the act 
of 1831. {Pan/h. Laws, 15.) It is thus put in the power of any 
person to test by due process of law, the validity of any copy-right 
before he makes any pub icniion oi any matter contained in a book 
already published with a claim of right under colour of law ; in the 
words of the decisions in equity, he can, by these means, " show the 
claim to be merely colourable," which being done by a recovery 
of the penalty, an effectual bar is interposed to any proceeding in 
equity by way of injunction. In the present case, such an action 
could have been commenced against Mr. W eaton for the publi- 
cation of the eleventh volume, at any time previous to the 20th July, 
1828, for the twelfth at any time before the 25th June, 1829, and 
for the republication of the first volume with the impress of right in 
a second edition at any time before the I4th May, 1832, 

If a party is disposed to contest or invade the right of another 
claiming a copy-right of a book in the mode pointed out by law, he 
comes into a court of equity with a bad grace to disturb a long, quiet, 
and peaceable enjoyment of a right, by urging only the same objec- 
tions which remain open to him for two years after the publication 
of any book with the impress and claim of copy-right, by a process 
of which he can avail himself at his pleasure during the time pre- 
scribed by Congress. 

The adjudications in equity have not defined the time of possession 
which will entitle an author to a continued injunction against a vio- 
lator of his rights, but I think the acts of Congress which limit the 
suits for this penalty for claiming a copy-right when none has been 
secured by law, ought to be taken as fixing the longest period during 
which an opposing party ought to be permitted to make such objec- 
tions to an injunction, as require a court of equity to examine into 
the validity of the title. For these reasons I am clearly of opinion, 
that there is in the bill of the complainants, and in the case, as it now 
appears, such manifest equity, as entitles them to the relief prayed 
for, and that it is contrary to the whole course and best settled prin- 
ciples of equity, to make that relief dependant on the result of an issue 
on the fact of publication in the newspapers, or the deposit of a copy 
in the department of state. These are matters which can, in no case, 
affect the equity of the claim to an injunction under the circum* 
stances of this controversy ; they are sheer dry legal objections, mere 
18 



142 

forms affecting only the strict legal right, without impairing the strong 
equity arising from long and quiet enjoyment. 

Should the complainants bring an action for damages, the defend- 
ants will have the full benefit of these objections. A court of law is 
the proper place in which to urge them, and, in my opinion, the only 
one where they can be available, after this lapse of time. No dis- 
tinction is better established in equity, than that time and long pos- 
session are, in all cases, circumstances of powerful effect, especially 
in cases of injunction. The course now taken by this court, not 
only confounds all distinction between cases of recent and long pos- 
session, in opposition to all authority, but by permitting the objections 
now urged to be available after such long possession, establishes a 
universal rule, that an author is bound, after any lapse of time, to be 
prepared with proof of matters purely in pais, on the penalty of for- 
feiting, not only all his legal, but equitable remedies for the violation 
of his right. As the case now stands, the complainants are put to 
the same proof of their right, as if their book was newly published ; 
they are deprived of all the benefits which time and long posses- 
sion give to all suitors in a court of equity, and are compelled, while 
suing there, to assume, in all respects, the attitude of suitors in a 
court of law, claiming damages. I am utterly mistaken in the first 
principles of the law of equity, if this comports with justice or good 
conscience. 

The only ground for refusing an injunction in this case, which is 
examinable on this appeal, is, in my opinion, the allegation that the 
reports of Mr. Wheaton are not the subject of copy-right. The 
opinions of the court are clearly not so, but the marginal notes, or 
syllabus of the cases and points decided, the abstract of the record 
and evidence, and the index to the several volumes, are as much lite- 
rary property as any other productions of the mind. None require 
the exercise of more judgment and labour, and they add greatly to 
the value and utility of the reports, as without them they would com- 
pel the reader to examine the whole opinion, in order to ascertain 
the points decided, and the whole book must be searched before the 
substance of its contents could be known. Nothing contributes so 
much to the correct understanding of the adjudications of a court, as 
a judiciously condensed view of the case in which it is rendered. These 
summaries, together with the notes and index, indicate the talent of 
the reporter, as well as relieve the bar and the judges of great labour. 
They are professional productions of the highest order, which de- 
serve, in an eminent degree, the fulness of protection which the law 
can, afford to literary property. In the present case, it is not denied, 
in the answer or the argument, that the marginal notes, the summa- 
ries, and indexiof -Mr. Wheaton, have been very freely copied in the 



143 

Condensed Reports, which, generally speaking, with the exception 
of the arguments of counsel, and the notes of Mr. Wheaton at the 
end of the cases, are a transcript of his reports. There may be excep- 
tions, but such is the general character of the respondent's works. 
So far, therefore, as it is a publication of what was the subject of 
copy-right,, in the reports of Mr. Wheaton, it is a violation of his right 
of property, the further progress of which ought to be enjoined, and 
an account of past profits decreed, on such principles as the court 
may deem equitable. 

As, however, I have the misfortune to differ with the court on this 
part of the case, it is necessary to give my opinion on the other 
questions which have arisen, as to which I cannot concur in the con- 
clusions to which the majority have arrived. 

These questions are, 1. The common law right of authors in their 
production ; and 2. Whether, by the act of Congress of 1790, the 
publication in the newspapers, and the deposit of a copy in the office 
of the secretary of state, are indispensable to vest a copy-right. 
The evidence of there being at common law a right of literary 
property in the authors of books after publication, is most plenary, 
both from the common consent and general understanding in the 
community — judicial and legislative authority. In Tonson v. Collins, 
the jury found a special verdict, " that before the reign of Queen 
Anne, it was usual to purchase from authors the perpetual copy-right 
of their books, and to assign the same for valuable consideration, 
and to settle them in family settlements, for the provision of wives 
and children." (1 W. Bl. 301.) The same fact was found by 
another special verdict, in Millar v. Taylor, (4 Burr. 2306.) and 
Lord Mansfield stated another fact, clearly showing the general 
understanding that there was such property in authors. " There are 
many decrees which make these things assets.'''' (1 W. Bl. 33.5.) 
The court of chancery has uniformly proceeded upon the common 
Saw right. " They considered the act (the statute of Anne) not as 
creating a new offence, but as giving additional security to a pro- 
prietor grieved, and gave relief without regard to any of the pro- 
visions in the act, or whether the time was or was not expired." 
(4 Burr. 2407.) In Millar v. Taylor, also, the Court of King's 
Bench solemnly affirmed the common law right of authors. The de- 
fendant, after assigning errors in parliament, suffered a non-pros, of 
his writ of error, and the commissioners, who acted in place of the 
Lord Chancellor, granted an injunction. {4 Burr. 240S.) A majority 
of the judges in Donalchon v. Becket, affirmed the same principle 
four years afterwards; (ib. 2417.) and it was so considered in this 
country as a settled point before the adoption of the constitution. 



144 

Federalist, No. 43. p. 241.) The second section of the statute of 
b Anne 19, contains a clear and direct legislative affirmance of an 
existing right of property in books after publication. " And whereas 
many persons may, through ignorance, offend against this act unless 
some provisions be made whereby the property in every such book as 
is intended by this act to be secured to the proprietor or proprietors 
thereof, may be ascertained," &c. (4 Bvff. 418.) The preamble of 
the act is in perfect accordance with this explicit declaration of its 
intention to secure a right of property existing in proprietors before 
its passage, and being in affirmance of common usage, which is but 
another word for common law, leaves no doubt of what the law 
was before its passage, as well as what it would still be in England, 
if it had not been held to abrogate the common law right, and to 
confine the remedy of authors to cases where they have complied 
with the requisitions of the statute of Anne. 

It is not necessary to inquire into the construction which that sta- 
tute has received in that country, further than as it may elucidate 
the construction of the acts of Congress. The statute of Anne was 
passed after the settlement of Pennsylvania ; it has never been re- 
enacted or adopted by usage, and is not in force as a part of its law. 
The rules established by the Supreme Court, relative to British sta- 
tutes passed after the colonization, are conclusive on this point. (I 
Dall. 67. 74. 3 Binney, 595, 596.) 

I therefore assume it as a point settled by common consent and 
judicial authority, that by the common law of England, before the 
American revolution, the author of a book had a property in it, 
which was protected against violation as much as land or a chattel ; 
it was a right known and recognised, which passed by assignment 
or other conveyance : it passed to executors as the other estate of a 
descendant, and was in his hand assets for the payment of debts or 
distribution among the next of kin. There can be no higher evi- 
dence of property in any thing else than that by common consent ; 
it passes from hand to hand as such, under the sanction of law and 
the protection of courts and the legislature : the common law knows 
no distinction of right between one species of property and another: 
whatever is property is the right of the proprietor, who is entitled to 
protection in its exclusive enjoyment by the rules of the common 
law, which afford a remedy for every violation of right. 

It is a principle of universal recognition in the United States, that 
the common law of England, in relation to what is property, its 
rights, and the remedies prescribed for injuries to them, was also 
the common law of the colonies, from their first settlement, and so 
continued till the revolution. On some subjects, it was not suited to 



146 

the condition of the colonists ; and, therefore, not adopted ; or was 
so modified as to conform to local usage or legislation, but as re- 
spects the right of property, it was of universal adoption. 

The sixth article of the charter to Penn contained this provision, 
" That the laws for regulating and governing of properly, within the 
said province, as well for the descent and enjoyment of lands, as for 
the enjoyment and succession of goods and chattels, and likewise as 
to felonies, should be and continue the same as they should be for 
the time being, by the general course of the law in the hingdom of 
England, until the laws should be altered by the said William Penn, 
his heirs and assigns, and by the freemen of the said province, their 
delegates and deputies, or the greater part of them." 

In the preamble to the act of 1718 is this declaration, " And 
whereas it is a settled point, that the common law is the birthright 
of English subjects, so it ought to be their rule in the British do- 
minions j but acts of parliament have been judged not to extend to 
these plantations unless they are particularly named in such acts," 
&c. (1 Dull. Laws, 130. 1 Sinith, 105. 110.) The act of 1777 de- 
clares, that " the common law, and such of the statute laws of En- 
gland as have heretofore been in force in the said province, except as 
is hereafter excepted," shall be in force and binding on the inhabi- 
tants of the state, {i Doll. Laivs,l^% 1 -SmiVA, 429, 430. 432. note. 
3 Binney, .'795, 596.) Such has been the policy of Pennsylvania from 
its first settlement to the present time, in relation to the common 
law in general ; but there is one principle of policy which seems to 
have been a favourite one with its founder and early settlers. In the 
first frame of government, adopted on the 25th April, I6S2, article 
12, it is declared, that the governor and provincial council shall erect 
and order all public schools, and encourage and reward the authors 
of important sciences and laudable inventions in said province. This 
was confirmed by the first of the laws agreed upon in England. The 
same provision was also contained in the frame of government of 2d 
February, 1683, and in that of the 7th of November, 1696. (2 
Fraud. Hist, of Penn., App. 11. 15. 24. 37.) 

So far, therefore, from repudiating the protection of the literary 
property of authors, the settlers of that province extended it to inven- 
tors, not only adopting the common law as to one, but the principle 
of the statute of 21 James as to the other. 

I can look at these provisions in the frames of government in no 
other light than as most solemn declarations, that the whole course 
of the law of England, as it existed at the time of the charter, which 
protected the property of authors or inventors, was suited to the con- 
dition of the colonists, and formed a part of their system of jurispru- 
dence. These declarations are a direct negative to the proposition 



146 

that authors were on a worse footing in the colony than in the mother 
country, and, coupled with the adoption of the common law as a 
general rule of property, seem to me conclusive of the existence of 
the right of authors and proprietors, independently of any statute or 
act of assembly. 

The courts of Pennsylvania have uniformly followed and furthered 
the policy of the colony by a free and liberal construction of the acts 
of the proprietor and legislature, in the application of the rules and 
principles of the common law, by enforcing them in all cases as to 
which they have not been abrogated, assuming it as a settled princi- 
ple, that the common law is the rule of right and remedy till altered 
by usage or legislation. 

In 1782, the Supreme Court declared, that " the common law of 
England had always been in force in Pennsylvania. (1 Dall. 67.) 
Our ancestors who came out on the faith of the charter, brought with 
them the common law in general, although many of its principles lay 
dormant until awakened by occasion, dormit aiiquando lex, moritur 
nunquam." The true proposition is, that the common law is general 
and fundamental, and unless where the common usage of the country 
has changed it, or it has been altered by Acts of Assembly, it is 
the inexhaustible fountain of justice, from which we draw our laws. 
(9 S. 4- i?. 330. 339. 358.) Thefirstsettlersof Pennsylvania brought 
with them the common law in general, except such parts thereof as 
were unfit for colonies. (11 -S. <^ R. 273.) The same remark may 
be applied to all the states of the Union. I have referred particular- 
ly to Pennsylvania, as this cause was instituted in that state, and its 
decision must be governed by the law of the forum. That slate, 
however, was not singular in her attachment to the common law, or 
in adopting and adhering to it, as the foundation of property and the 
rule for its government. The first Congress of the revolution, in the 
name of all the assembled colonies, proclaimed in the Declaration of 
Rights, in October, 1771, " that the respective colonies are entitled 
to the common law of England." (1 Journal Cong. 28. ed. of 1800.) 
This court has solemnly adjudged, that " we take it to be a clear 
principle, that the common law in force at the emigration of our an- 
cestors, is deemed the birthright of the colonies, unless so far as it is 
inapplicable to their situation, or repugnant to their other rights and 
privileges. (9 Cr. 333.) The same learned judge, who delivered 
the opinion of the court in that case, thus expresses himself in another 
place : " When I speak here of the common law, I use the word in 
its largest sens?, as including the whole system of English jurispru- 
dence. (1 Gallison, 493.) The common law of one state, there- 
fore, is not the common law of another, but the common law of En- 
gland is the law of each state, so far as each state has adopted it, and 



147 

it results from that position, connected with the judicial act, that the 
common law will always apply to suits between citizen and citizen, 
whether they are instituted in a federal or state court." (2 Dull. 
394.) 

Tlie whole action of the courts of the United States, is governed 
by the common law. The constitution, which provides that " the 
judicial power shall extend to all cases in law and equity" — " to all 
cases of admiralty and maritime jurisdiction," refers of necessity to 
the common law for the rules which ascertain what is a case at law 
or a case in equity, as well as what cases are of admiralty or mari- 
time jurisdiction, as neither the local common law nor statutes of the 
states, point out the line which separates the several jurisdictions. 
The seventh amendment to the constitution of the United States, 
which declares that " in suits at common Imv'" — " no fact tried by a 
jury shall be otherwise re-examined in any court of the United States 
than according to the rules of the common law,'''' is an authoritative 
declaration, that it is the guide for all courts. " At the adoption of 
the constitution there were no states in the union, the basis of whose 
jurisprudence was not essentially that of the common law in its 
widest meaning, and probably no states were contemplated in which 
it would not e.xist." (3 Pet. 446. 448.) The thirteenth section of 
the judiciary act gives the Supreme Court authority to issue certain 
writs " in cases warranted by the principles and usages oflaiu.'''' The 
seventeenth section gives the same power to Circuit Courts, " agree- 
ably to the principles and usages of law.'''' The fifteenth section 
empowers them to compel the production of books, in cases and 
under circumstances where they might be compelled to produce the 
same " by the ordinary rules of proceeding in chancery.'''' The si.\- 
teenth section prohibits suits in equity where plain remedy can be had 
at law. The seventeenth authorizes new trials for reasons for which 
new trials " have been usually granted in courts of law.'''' (1 Story, 
59.) The Circuit and Supreme Courts have often and uniformly 
decided that the constitution and the judiciary act refer to cases at 
law and in equity, to the common law, to the usages and principles of 
law, &c., as they have been settled ; not according to the rules and 
practice of state courts, but of those of common law and equity in 
the country whence we derive our jurisprudence. (3 Whea. 221. 10 
Whea. 20. 56. 5 Cr. 222. 7 Whea. 45. 1 Pet. 613. 4 Whea. 116. 
7 Whea. 45. 2 Mas. 270. 4 Wash. 205. 354.) 

The eleventh section of the judiciary act, gives to the Circuit 
Court " original cognizance of all suits of a civil nature, at common 
law or in equity,^'' &c. An action for damages for violating any 
right of property recognised by law, is a suit at com.mon law ; a bill 
praying for an injunction and account, is a suit in equity. The 



148 

objection, then, to the sustaining a suit in either case, and adminis- 
tering the appropriate remedy, is narrowed to the single point — has 
the plaintiff a right at law or in equity ? A Circuit Court sitting in 
Pennsylvania, is bound to make the laws of the state the rule of its 
decision. The unvarying course of the Supreme Court has been to 
pay the same respect to the decisions of the highest law tribunals of 
a state, in the exposition of the statutes and local usages or common 
law of a state, as to an act of Assembly. (12 Whea. 161, 162. 
4 Pet. 380. 5 Pet. 154. 6 Whea. 127. 11 Whea. 367. 2 Pet. 
525. 556.) If they do not reach the case, this and the Circuit Court 
resort to the common law of England, as the rule both of right, 
remedy, and the mode of its adminslration, as a general funda- 
mental principle pervading the whole jurisprudence of the United 
States, and the action of its courts in all the branches of their 
respective jurisdictions. 

The statutes of Pennsylvania have adopted the common law ; the 
Supreme Court of the state has invariably expounded these statutes 
so as to embrace the whole system, except such parts as have been 
abrogated by statute or local usage. It has been clearly shown in 
the argument, that authors had, by the common law, a copy-right 
in their books, which was recognised and protected as property. 
Nor is it pretended that there is, or ever has been, any statute or 
common usage in Pennsylvania, which has abrogated, or in any way 
impaired any right of property existing at common law, prior to the 
act of 1777, or any remedy for its violation. Both remain in all 
their force, unless this court shall adopt tlie proposition that the pro- 
tection of literary property was unsuited to the condition of the 
colonies. As that was a matter of which the colonial and state 
legislature were the competent judges, and as they have not excluded 
this species of property from the pale of the law, I think we are 
bound to follow the rule laid down by the Supreme Court of that 
state, when they decided, that the suffering a common recovery by 
a tenant for life, works a forfeiture of his estate by the common 
law, and destroys all remainders upon it. " It lies upon those, then, 
who deny the existence of the law of forfeiture in Pennsylvania, 
to prove it." (9 S. <^ R. 334.) The reason applies with much 
more force to those who deny the existence of a common law right 
of property in authors. 

Whatever force may be given to the argument of novelty in other 
states, it has none in that in which it has been often decided that 
common law remedies may be applied, though they had never before 
been used. Thus, in 1809, an assize of nuisance was sustained, 
though none had ever been carried through a court at any former 



^riod, (2 Binney, 194.) the court considering " it all along a living 
remedy, though dormant." (17 S. ^ R. 211.) No writ o^ entry sur 
disseisin had ever been brought before 1824, yet the Supreme Court 
held it to be an existing remedy. (11 S. ^ R. 272.) There is no 
decision of this court which is in hostility to any of the foregoing prin- 
ciples ; on the contrary, they harmonize vi^ith those of the courts of 
Pennsylvania. There has been, and yet is, a diversity of opinion on 
the question how far the courts of the United States possess a comr 
mon law criminal jurisdiction, independently of what is conferred 
on them by acts of Congress. This court, however, in the case of 
CooUdge, (1 Whea. 416.) considered the question as open to an 
argument ; and no one who will read the very able opinion of the 
learned judge of the First Circuit, (1 Gall. 488.) can deny that it is 
worthy of the most serious consideration. 

But no doubt has ever existed in relation to the common law, as 
to rights of property and civil remedies, being, by the constitution, 
the judiciary act, and the settled course of adjudications, the rule 
both of right and remedy, unless opposed to some local law. I am 
therefore wholly at a loss to know, on what ground a Circuit Court, 
sitting in Pennsylvania, in a suit in equity, between citizens of New- 
York, complainants, and citizens of Pennsylvania, respondents, 
should not adopt the common law of England, which, since 1779, 
has the same force as statute law in that state, as the test by which 
to decide upon the rights of the parties, and the remedy to which the 
•one complaining is entitled by the course and principles of courts of 
«quity. The common law gives him a right of property, as well as 
an appropriate remedy; no law or usage of the state has impaired it, 
■the statute of 8 Anne has not been adopted, and is not in force ; but 
the common law has been adopted, and it is yet in force, as a rule 
for the decision of the Circuit Courts, as well as of this, unless other- 
wise required by the constitution or laws of the United States. (1 
Ls. U. S. Story's ed. 67.) 

So far from any act of Congress having impaired this common 
law right, they seem to me to recognise its existence, and to have 
been intended to afford it additional security. 

In 1783, the Congress recommended to the states the passage of 
laws to secure to the authors or publishers of any new books, not 
hitherto printed, and their executors, a copy-right therein. (S 
Journals, 189. 2d May.) The powers of the confederation were not 
competent to the object, but the new constitution having empowered ■ 
Congress to do it, the act of 1790 was passed to effect it. 

The first section declares that the author of a book already printed in 
the United States, or any other person, his executors, administrators, 
or assigns, who had legally purchased or acquired the copy-right 
19 



U6 

thereof, should have the sole right of printing and sellitig it, for four- 
teen years, from the recording the title in the office of the clerk of 
the District Court, in the same manner as the author of an unpub- 
lished book or manuscript. This is a plain recognition of an exist- 
ing property in a printed book; a declaratory act that it was capable 
of being transferred and assigned ; that the property passed to ex- 
ecutors or administrators ; that it could be purchased, and a copy- 
right legally acquired to reprint and sell the same, before the law 
was passed. It is a complete definition of literary property, distinctly 
giving its attributes and incidents ; it is also a direct negative to the 
proposition, that the publication and sale of the book was either a 
dedication to the public, or gave to the purchaser the right of reprint- 
ing it. The security afforded by this act was not only retrospective, 
but unlimited as to time ; a book published forty years before the 
passage of the law, was equally within the law as one recently pub- 
lished. The second section imposes the same penalties on persons 
who shall reprint a book printed before the law, as for printing an un- 
published manuscript, or for reprinting a book printed by the author, 
after the law had passed. 'J'his consideration is of the greater im- 
portance, when we advert to the history of the controversy concern- 
ing literary property. Mr. Justice Yates, while at the bar, admitted 
that " an author had a property in his sentiments till he published them, 
and that he might sell, and give a title to publish them." (1 W. Bl. 
333.) In his celebrated opmion, he lays down one position which he 
apprehends will not be disputed on either side. " While the subject 
of publication continues his axon exclusive property, he will so long 
have the sole and perpetual right to publish it ; but whenever that 
property ceases, or by any act or event becomes common, the right 
of publication will be equally common. (4 Burr. 2355.) 

The great question was, whether publication made it comKion : it 
Was as famihar to the profession in this country as in England, and to 
none more so than to the members of Congress, as is most evident 
from the phraseology of the act. {Federalist, No. 43. p. 141.) In 
recognising the assignability of a copy-right in books already printed, 
and its transmission to executors, the law is based on the facts found 
by the special jury in Tonson v. Collins, and in Millar v. Taylor, as 
well as tliat stated by Lord Mansfield, that a copy-right teas assets. 
This is a decisive expression of the sense of Congress, that a copy- 
right was property after publication, or it could not have been assign- 
able or transmissible. And it would be derogatory, as well to the 
wisdom, as to the justice of any legislature, to mipute to them the 
intention of inflicting a heavy penalty on the publisher of a book, 
which was common property, giving one half to the author, or prO' 



151 

prietor, with direction to him to destroy the sheets, and a forfeiture 
to him of all the books printed in contravention of his copy-right. 

If tiiis right was a mere creature of the act of Congress, if the 
purchaser of a book had the right to multiply copies at his pleasure, 
the power of Congress to prescribe penallies and forfeitures for the 
benefit of an author or proprietor, who had no other than a common 
right of publication, might well be questioned : it would be clearly 
repugnant to justice and sound legislation, to make it penal to 
reprint a book in which no one had or could have property. 

But as there was a property at common law in printed books. Con- 
gress protected it as effectually as one unpublished. When the law 
recognises a person as the " proprietor," there must be " property :" 
when "he purchases'" or " assigns," there must be a subject matter 
to purchase or assign : his executors can have no right which did not 
pass from him, and he " cannot legally acquire a copy-right" when 
there is none to acquire. 

The difference between the wording of the statute of Anne, and the 
act of 1790, presents another powerful reason to show that it did 
not take away any common law right ; the substitution of the word 
" securing'''' in place of " vesting'''' as in the statute of Anne, the 
omission of the words " no longer,'''' which were deemed so iniport- 
ant, must mean something. (Vide 4 Burr. 2389, 2390.) There is 
no provision which excludes the author from the enjoyment of his 
common law right; the third section only excludes him from the 
benefit of the act if he does not make the entry with the clerk ; had 
it been intended to deny all right, to preclude the existence of any 
property in the book, it would have excluded him from the benefit of 
a copy-right : the same remark applies to the first section of the act 
of 1802. The second section of this act is strongly illustrative of 
the sense of Congress. In providing for the protection of the authors 
and proprietors of prints, the law is wholly prospective to prints en- 
graved after the passage ; its omission of prints previously published, 
while printed books were put on the same footing as unpublished 
manuscripts, could not have been without a meaning or a reference 
to the common law right. There was no copy-right in prints in 
England, until 8 George II. chap. 13, gave one in prints engraved 
after the passage of that statute. (6 Ruff. 184.) As it was a mere 
statutory right in England, Congress so considered it, and therefore 
made no provision for prints previously published. (2 Ls. V. S. 
Storys'ed. 866,861.) 

The act of 1819 makes a plain distinction between the case of an 
author and inventor — the word granting referring to a right created 
in the inventor, and the word confirming referring to a right secured 
to an author : the one word being a negative of a pre-existing right, 
the other necessarily implying it. 



152 

For these reasons, and in the absence of any clause in either the 
act of 1790 or 1802, which in terms, or by fair construction, contains 
or implies a denial of the common law right, it seems to me that the 
well settled rule which has been applied in England to the statute 8 
Anne, that an affirmative statute does not impair a common law 
right, but is uniformly held to be merely accumulative as to the 
remedy, applies with greater force in this country, to leave the com- 
mon law right of authors unquestioned. (7 D. ^ E. 62. 4 Bac. 641. 
19 Vin. 511. Liu. HI. 115. 17 S. 4- R. 92. 5 D. C. D., 330.) 

The counsel of the respondents have relied much on the analogy 
between the case of authors and inventors, in order to establish the 
position, that as the latter had no rights at common law, therefore 
there was none in authors. But admitting the full force of their rea- 
soning, it only tends to prove what the common law ought- to be as 
to inventors : it does not disprove the- fact found by special juries 
ajs to copy-rights being property, or overrule the adjudications at 
law and in equity which formed the common law of England and 
of these states by adoption. If we adopt as a principle of law, the 
proposition, that because the common law did not recognise as 
property, that species of the result of mental labour, ingenuity, or 
combination of both, which is termed an improvement or inven- 
tion in mechanics, it therefore does not recognise a property in a lite- 
rary production, we open a wide field of innovation, which will 
unsettle the best settled rules of property. On other subjects, it is 
deemed full evidence of the existing common law, that there has been 
on a point, or question, one adjudication which has received general 
assent and acquiescence ; much more so when the course of the law 
has remained unquestioned after solemn decisions. If authors had not 
a right of property by the common law, or if that part of the common 
law has not been adopted here, it becomes a matter of serious inquiry 
what the public and the profession are to consider as evidence of the 
law, and the rules, as to right and remedy, by which other property 
is to be governed. If the judicial history of the law of copy- 
right does not establish its existence, independent of statutes in En- 
gland, and if the acts of Congress, passed professedly for the encour- 
agement of learning, by securing the copy-right of authors, is, by 
fair construction, an abrogation of the common law right, I am 
much mistaken if the opinion of the majority of the court in this case 
does not, in its consequences, open a new epoch in the history of our 
jurisprudence. I, for one, must look to other than the accustomed 
sources of information to find the common law, to new tests of its 
adoption here, and new rules of construing statutes as well in their 
effect on the pre-existing-law of property, as the settled principles by 
which their provisions are interpreted. There are none more ancient 
or sacred than that the common law can be altered only by act of 



153 

parliament ; {Litt. 170. Co. Litt. 115, 116.) that statutes and usages 
which derogate from its rules shall be construed strictly, and not be 
extended by eejuity beyond their words or necessary implication ; (1 
Bl. Com. 79. Glib. Dev. 153. Litt. sec. 169. Co. Liu. 33 b. 58 b. 
113 a. 4 Dall. 64. 2 Binney, 284.) and that a statute which gives an 
additional remedy, or inflicts new penalties and forfeitures for the 
violation of a right, leaves the injured party the option of appealing 
to the statute or common law for redress. (4 Burr. 23S0, 2381. 
2387. n. 4^ E. 627. 4 Bac. Ah. 641. 645. D. C. D. 331.) In the 
application of these principles to the acts of Congress on copy-right, 
there can be found no one provision which either professes, or by im- 
plication can be construed, to alter the common law. Their titles 
and enactments are affirmative and remedial for the security of the 
right of property in authors, and they carefully exclude the words 
in the statute of Anne which have led to the construction it has re- 
ceived in England. Congress has not declared that the copy-right 
shall exist, and be secured for fourteen years " and no longer,'''' as 
they would have done if they had intended to limit the right to that 
term ; the omission of these words is therefore powerful evidence in 
itself, that it was not intended to leave the law open to the construc- 
tion which the statute of Anne had received : and this evidence be- 
comes most conclusive, in the absence of any word, phrase, or clause, 
which can be interpreted to imply any abrogation of the right exist- 
ing at common law, which was the rule of property adopted from its 
first settlement by Pennsylvania, and so continues to this day as the 
settled law of the state. By every principle of its jurisprudence, the 
party who alleges that the common law rules of property of any de- 
scription are not in force in that state, must, in the language of its 
Supreme Court, '■'■prove it.''"' The issue is thus thrown oh the re- 
spondents, to show that the law of copy-right was never adopted. In 
this they have utterly failed, for they have not offered a scintilla of 
proof of any local usage, of any judicial dictum, or a legislative de- 
claration, that the law of literary property has not been adopted in 
that state, or that it was unsuited to the condition and policy of its 
inhabitants. 

The adoption of the common law "wi the general,''' as a system 
of civil jurisprudence for the government of property, necessarily 
throws the burden of proving the exception of any particular de- 
scription of property on those who affirm the exception ; if they fail 
in this, the general principle must prevail. If a different rule is ap- 
plied in this case, the sixth article of the charter to Penn, the acts of 
Assembly of 1718 and 1777, as well as the whole course of judicial 
opinions in the state, from its first settlement to this time, become 
annulled and reversed- On the other hand, if the established rule 



154 

prevails, there is in Pennsylvania an ancient, fixed rule of property, 
a law of the forum, which is repugnant to no law of the Union, and 
becomes imperative on the federal courts as their rule of decision in 
the present controversy, that, is the common law as adopted in Penn- 
sylvania, and recognised as well by the constitution and the judiciary 
act, as by the repeated and solemn adjudications of this court ; all 
in affirmance of the declaration of rights made by the first Congress 
in 1774. 

It remains to consider the question arising under the acts of Con- 
gress on the subject of copy-rights, which is, whether the complainants 
have complied with such of its requisitions as are indispensable to 
give them a right of property in the reports of Mr. Wheaton. 

It being admitted that all the volumes were duly entered in the 
office of the clerk of the District Court, and a copy of the entry 
printed on the title-leaf, the only subject of inquiry is, whether any 
further acts were necessary to vest the title. Whether there is suffi- 
cient evidence of those acts having been done, will depend on the 
results of the issue of fact directed by the court, which it would be 
premature to examine at present. 

It is an admitted principle of American jurisprudence, that where 
" English statutes have been adopted into our legislation, the known 
and settled construction of those statutes by courts of law, has been 
considered as silently incorporated into the acts, or has been received 
with all the weight of authority." Though the acts may not be 
identical with the British statutes, yet " the construction which the 
latter may have received, the principles and practice which have 
regulated grants under them, as they must have been known and 
are tacitly referred to in some of the provisions of our own statutes," 
afford materials to illustrate it. (2 Pet. 18. Pennock v. Dialogue.) 

In commenting on the act of 1793, as to patents for inventions, 
this court refers to the statute 21 Jac, and its construction by Lord 
Coke and Chief Justice Gibbs, and remarks, "but it can scarcely 
admit of a doubt that they must have been within the contemplation 
of those by whom it (the act of 1793) was framed, as well as the 
construction which had been put upon them by Lord Coke." (2 
Pet. 21.) No sound reason can be assigned for not applying the 
same rule to the statute of Anne, and the act of 1790. As no case 
of copy-right has heretofore come before this court, I cannot avail 
myself of its authority on the identical question now presented, but 
cannot omit a reference to that of my predecessor in the Circuit 
Court. " In this respect the act (of 1790) corresponds, and was 
probably intended to correspond, with the statute 8 Anne, ch. 19, 
which, and the construction given to it in the cases of, &c,, and 
some others, were no doubt within the view of the legislature which 



153 

passed this act." (4 Wash. C. C. R. 490.) No one can doubt the 
fact, that the whole course of the law of England on the subject of 
copy-right was well understood and fully considered by the Congress 
of 1790, among whom were some of the most eminent jurists of that 
or any other lime. The general scope, as well as the detailed pro- 
visions of their acts on inventions and copy-rights, most manifestly 
show that they took pattern from the statutes of James and Anne ; 
while the difference between them evidently arose from the defects 
in those statutes, or the doubts which had arisen in their expositions. 
Applying, then, the principle on which this court acted in the case 
of Pennock v. Dialogue to this, I proceed to inquire, what is neces- 
sary to secure a copy-right under the acts of 1790 and 1802? The 
answer is found in the laws. The first section of the act of 1790 
declares, that the author or proprietor "shall have the sole right of 
printing and reprinting such map, chart, or book, for fourteen years 
from the recording the title thereof in the clerk's olTice as is hereinafter 
directed," (1 S tor y'' s ed. 95.) The third section declares," that no per- 
son shall be entitled to the benefit of this act, unless he shall deposit 
a copy of the title in the clerk's office of the District Court where the 
author or proprietor shall reside." The clerk is required to record 
the same in a book, and to give a copy to the author or proprietor, if 
he shall require it, under the seal of the court in the form prescribed, 
and for a specified compensation. This is the only requisite expressly 
enjoined by the law, to give or secure the sole and exclusive right for 
the first term of fourteen years ; by the proviso in the first section, it 
is requisite, to secure the right for a second term, that the author or 
proprietor " shall cause the title of the book to be a second time re- 
corded and published, in the same manner as is hereinafter directed, 
and that within six months before the expiration of the first term of 
fourteen years aforesaid." 

A distinct and separate direction is contained in the third section. 
" And such author or proprietor shall, within two months from the 
date thereof, (the recording the title,) cause a copy of the said record 
to be published in one or more newspapers printed in the United 
States, for the space of four weeks." 

The fourth section directs, that the " author or proprietor of any 
book shall, within six months after the publishing thereof, deliver, or 
cause to be delivered, to the secretary of state, a copy of the same, 
to be preserved in his office.'" These are all the requisites prescribed 
by this law to the authors or proprietors of books, whether they are 
considered as conditions precedent to vesting the right, or as merely 
directions, which may be omitted without impairing the title. 

Assuming, in this view of the case, that there is no copy-right in- 
dependent of this act of Congress, it is evident that it commences 



156 

only from the recording the title, the omission of which is fatal to the 
author's right, because the law has expressly declared it so ; but as it 
does not declare the publishing in the papers to be indispensable for 
either the commencement of the right, or a continuance of it for the full 
term, it could not have been so intended. Such a construction would 
be in direct contradiction to the express declaration, that the right 
shall be for the term "of fourteen years from the recording." It 
vested at that time as a perfect continuing right of property for a de- 
fined term, without any provision that it should cease or become for- 
feited by any act of omission whatever. The author was not re- 
quired to make the publication before his term commenced; it there- 
fore can by no possibility be deemed to be a condition precedent, or 
a requisite indispensable to vest the title in the first instance, to con- 
tinue it during the two months allowed for publication, or the six 
months allowed for delivering the copy to the secretary of state. 
Thus far there can be no doubt of the right, nor that if these re- 
quisites are conditions they are subsequent. Viewing them as such, 
the utmost legal result of their breach is, that the United States, as the 
grantors, may take advantage of it in such mode as they may pre- 
scribe by law ; but the respondents, who are strangers to the right, 
cannot avail themselves of it against the complainants, who are in 
possession under a claim of title, which is good as to all but the 
grantor, and good against him until he interferes to resume or termi- 
nate it. {Shep. Touch. 149. 7 Pet. 606.) To authorize any other 
person to interfere with the enjoyment of the property, it must appear 
that by the terms or fair interpretation of the law, the condition is 
made a limitation, which extinguishes the right, by legal' operation, 
on the non-performance of the^act, without any thing done by the 
grantor. {Shep. Touch. 141. 3 Bl. Com. 155.) No act of Con- 
gress contains such limitation, or uses words which can be so con- 
strued. When the intention of the legislature is to make the per- 
formance of an act essential to the riglit, it not only declares it to be 
so, but prescribes that the author shall be furnished with such evi- 
dence of its having been done as shall save him the necessity of pro- 
vino- it by the ordinary rules of evidence, as in recording a copy of 
the title with the clerk, who is bound to give a certificate thereof, 
under seal, in the form prescribed by the third section of the act of 
1790. The third section of the patent law of 1793, makes the filing 
a specification in the office of the secretary of state essential to any 
richt, a certified copy whereof shall be competent evidence in all 
courts, &c. (2 Story, 302.) 

The omission to make a similar provision as to the other matters 
directed by the act of 1790, or to direct the secretary to make a 
s-ecord, and give a certificate of the delivery of the copy, which 



157 

should be evidence, is a plain indication of the sense of Congress 5 
and if it was not intended that the law should be expounded accord- 
ing to the ordinary rules of interpretation, Congress would have put 
all the requisites on the same footing. 

The making the benefits of the acts dependant on the performance 
of some things and not on others, is conclusive to show the meaning 
of the legislature. To make them all essential by mere construction, 
when the law itself discriminates between what is necessary for the 
title, and what is merely directory for other purposes, is tantamount 
to an adjudication, that Congress did not understand the legal effect 
of the provisions of the law. It is making the fourth section a con- 
dition precedent to the continuance of the right, by adding to, and 
transferring to it, the words of the third section, which make the 
record of the title indispensable. Thus construing two distinct un- 
connected sections, as well as the distinct and separate sentences 
and directions of each, into one entire sentence, and converting 
mere directions into conditions, by the breach of which an author 
forfeits an existing right of property, which henceforth becomes 
common, and he is made liable to the penalties in the fourth section 
of the act of 1802. So by the proviso in the first section of the act 
of 1790, the publication in the newspaper is made necessary to secure 
the copy-right for a second term, in addition to the recording the 
title again, both of which must be done six months before the expi- 
ration of the first term. The effect of a proviso in a law, is a con- 
dition precedent to the vesting a right, a limitation, or an exception, 
as the case may be, operating so as to exclude the case to which it 
extends, unless the party who claims the benefit of the law, complies 
with the requisition of the proviso. (3 D. C. D. 86. A. 2. Shep. 
Touch. 121. Co. Liu. 146 a. 203 b. [1 Pet. 636.) It is otherwise 
with a mere directory provision unless the law declares it necessary 
to vest a right in the party. (9 Cr. 95. 6 Pet. 730.) Nothing 
therefore can more clearly show the meaning of Congress as to 
the publication of the record, than that it is made indispensable in 
the case of a renewed copy-right, and 07ily directed in case of an 
original one. Had the last clause in the third section been a proviso, 
it would have been otherwise. (2 Co. 70. b. 71. b. 72. a. b.) The same 
rule applies, but with greater force, to the direction in the fourth 
section to deposit a copy of the book in the department of state, 
because it is a direction wholly unconnected with the preceding sec- 
tion ; neither is it necessary to entitle the author to the forfeitures 
and penalties prescribed by the second section. They are incurred 
by any violation of the copy-right after the recording and publishing 
the title " witkim the times limited and granted by this act," without 
any reference to the deposit of the copy in the office of state, When 
20 



158 

therefore we find that the author or proprietor is expressly authorized 
to recover the penalties and take advantage of the forfeitures for 
twenty-eight years, this court cannot limit it to six months, by inter- 
polating the deposit as a condition to the right thus declared abso- 
lute : this would be judicial legislation, not construction. In deciding 
on the construction of state laws and acts of Congress, whether their 
provisions are to be deemed essential to, or affecting a right created 
or secured by the law, or are merely directory to the officer or party 
who is to comply with them, this court has uniformly held that it 
depends on the words or necessary implication of the law itselfl 
(5 Cr. 234. 3 Whea. 594. 6 Whea. 511. 9 Whea. 736. 11 Whea. 
188. 190, 191. Wash. C. C. R. 11.) The result of these cases is the 
establishment of the proposition, that unless the act to be done is 
made essential to the vesting or validity of the right claimed, or the 
omission of its performance extinguishes one vested, its title is unim- 
paired, though the act is not performed. Such was the exposition of 
the patent law of 1793, by the learned judge of the First Circuit, 
The inventor is required to take an oath " that he is the true in- 
ventor," &c., but it was decided that the taking the oath was but a 
prerequisite to the granting of the patent, arid in no degree essential 
to its validity. It might as well be contended that the patent was void 
unless the thirty dollars required by the Uth section of the act had 
been previously paid." (1 Gall. 433.) 

Such too, was the exposition which Judge Washington, in the 
Circuit Court of Pennsylvania, gave to the act of 1790. " But the 
condition upon which the proprietor is to be entitled to the benefit 
of the act, cannot, -upon any grammatical construction, be extended 
to the requisition contained in the last sentence of this section, to 
publish a copy of the record of the title within the time and the 
period prescribed. It is entirely a new sentence, and is as muCh 
disconnected from the condition expressed in the preceding part of 
the section, as if it had been contained in the fourth section, to which 
there is clearly no condition annexed. If, then, the title of an author 
to a copy-right depended altogether upon this act, I should be of 
opinion that it would be complete, provided he had deposited a 
printed copy of the title of the book in the clerk's office as directed 
by the third section ; and that the publication of a copy of the same 
would only be necessary to enable him to sue for the forfeitures 
created by the second section." (4 Wash. C. C. R. 490.) 

The Supreme Court of Connecticut have decided that " the pro- 
visions of the statute, which require the author to publish the title of 
his book in a newspaper, and to deliver a copy of the work itself to 
the secretary of state, are merely directory, and constitute no part 
of the essential requisites for securing the copy-right." (3 Day, 158.) 



159 

These adjudications were in accordance with the course of the 
Enghsh courts in the construction of the statute of Anne, ch. 19. 
sec. 2., which directed the registry of the book in Stationers' Hall, 
and also the fifth section, which required the deposit of nine copies 
of the book in the same place for the use of certain libraries. It has 
uniformly been held, both at law and in equity, that these provisions 
were directory only, and not essential to the vesting the right, to 
enable the author to recover damages at law, or to have relief in 
equity. The right has been considered as vested absolutely during 
the term, though the directions of these two sections are not com- 
plied with. (2 Atk. 94. Butler v. Walker, cited in Blackwell v. 
Hooper.) " The registry is necessary only to entitle the author to the 
penalties." {Barnd. Ch. 211. 213. S. C* 7 D. (^ E. 627. 16 E. 
322. 333. 4 Bing. 243. 243. 13 C. Law Rep. 415, 416. S. C. 
1 Camp. 98. Eden on Irij. 193. 197. S. P. 1 W. Pol 330. 338. 
4 Burr. 2380. Jacob, 311. 4 Cond. Ch. 147.) Such was the settled 
construction of the statute of Anne, in conformity with which the act 
of 1790 was evidently framed. 

The statute (8 Geo. 2, ch. 13.) gives a copy-right in prints for " four- 
teen years, to commence from the day of the first publishing thereof, 
which shall be truly engraved with the name of the proprietor on 
each plate, and printed on every such print or prints." (6 Rvff. 184.) 
Lord Hardwicke, in 2 Atk. M,Barnad. Ch. 211, held that the en- 
graving the day of publication was not necessary to give the copy- 
right, but was only directory. So did Lord Ellenborough, as to the 
plaintiff's name, in 1 Camp. 98. Lord Alvanly was inclined to a 
different opinion, yet he held a general allegation of a publication 
*' on or about the thirteenth of May," to be sufficient to sustain a 
bill in equity. (2 Yes. jr. 324.) It has, however, been held neces- 
sary, to entitle an author to recover damages. (3 Wels. 60, 61. 5 
D. 4- E. 45. 7 D. <Sr E. 522. 4 Bingh. 239, &c. 13 C. L, 415.) 
But if the plaintiff omits to allege the day in his declaration, it is 
good after verdict. (7 D. ^ E. 522.) The reason given for this 
construction is, that the right commences from the day of publica- 
tion, and that this requisition is contained in the same clause which 
confers the right. 



* The learned judge who decided this case in the Circuit Court, considers tl-e 
opinion of Lord Hardwicke to have been otherwise : but this is owing to a mistake 
of the report of his opinion in 2 Atk. 95, of the word property for penalty. This is 
evident from the report of the same case in BuTtwdiston, 210, 213., in which the case 
is better reported. (13 C. L. 416.) The words of his Lordship are, "-but that is only 
a provision that is necessary to be complied with when the penalty of tie act is taken 
advantage of;" in which he is followed by Judge Washington, in 4 Wash. 490., and 
by Lord Eldon in Jacob, 311. 4 Cond. Ch. 147., and all the cases at law. 



160 

But no case has been adjudged in which a literal compliance with 
the directions of the act has been held indispensable to the right* 
"It has never been stated on any print which has been published, 
who was the proprietor, nor in any one of the cases which have been 
decided in favour of engravers, has the word proprietor ever ap- 
peared upon the print ;" the words on the print, " Newton del. Glu' 
disin Sculp., were held sufficient." The words of the act are 
" satisfied by the disclosure of the proprietor's name ; this is a suffi- 
cient indication of the person who is to be applied to for leave to 
copy the print ; coupled with the date, it shows how long the 
designer had the monopoly, and fully accomplished the two objects 
of the act." (4 Bingh. 242. 13 C. L. 416.) 

This uniform, unbroken current of authority, is not only in accord- 
ance with the settled rules of construing all statutes, which grant or 
secure rights of property, whether real, personal, or literary, but the 
general policy of the law for the especial protection of the latter as a 
favoured right. 

Lord Hardwicke denied that the statute of Anne created a mo- 
nopoly, " and therefore ought to receive strict construction. I am 
quite of a different opinion, and that it ought to receive a liberal con- 
struction ; for it is very far from being a monopoly, as it is intended 
to secure the properly of books in the authors themselves, or the pur- 
chasers of the copy, as some recompense for their pains and labour in 
such works as are of use in the learned world." (2Atk. 143.) The 
same spirit prevails in courts of law. " Looking, therefore, at the 
subject matter of the law, at the language employed by the legisla- 
ture, and the practice which has been uniformly followed by engra- 
vers, we cannot hesitate to determine that the proprietors of these 
prints are entitled to the protection which is afforded by the statutes ; 
a decision we have corae to with satisfaction, seeing that they exer- 
cise a branch of art eminently useful, and which in no slight degree 
' emollit mores nee sinet esse f eras.'' They contribute also, by the same 
means, to the circulation of a knowledge of mechanics, so necessary 
to our manufactures, and so useful to the best interest of the country. 
(13 C. Law, 419.) 

I cannot overlook this weight of judicial authority in the construc- 
tion of the act of 1790, and the kindred statutes of England, without 
violating the words of the act of Congress, the plain meaning of 
the legislature, the established rules and maxims for construing 
statutes, as well as the numerous adjudications upon them, which 
form, " according to the course and principles of courts of equity," 
the rule of our decision on bills of this decription, by the express di- 
rection of the law of 1819. 

Nor can I perceive in the act of 1802 any provision which can 



161 

vary the construction of the former law ; it merely prescribes an ad- 
ditional requisite essential to the right, which is " to cause a copy of 
the record to be inserted in the title-page, or in the page immediately 
following." (2 Story, 866. sec. 1.) It is not denied that this has 
been done as to all the volumes of Wheaton's Reports ; but it is con- 
tended, that though the words of this section do not, in terms, make 
the publishing in a newspaper, or a deposit in the office of state, 
essential to the title, yet it is a legislative construction of the act of 
1790, which this court is bound to adopt. The words are, that " be- 
fore he shall be entitled to the benefit of the act, (of 1790,) he shall, 
in addition to the requisites enjoined in the third and fourth sections 
of said act, give information, by causing a copy of the record to be," 
&c. 

Had Congress declared explicitly that all the requisites enjoined 
were indispensable to the right, this court would have been bound by 
it, as a legislative act : but they have neither done this, nor used 
words which can be so interpreted, according to their true meaning. 
The intention of the legislature must be manifested in words, com- 
petent to make the law in future, expressing their sense as plainly 33 
a declaratory act; and it must be expressed in terms capable of hav- 
ing that effect. " If this interpretation of the words should be too 
free for a judicial tribunal, yet if the legislature has made it, if Con- 
gress has explained its own meaning too unequivocally to be mis- 
taken, their courts may be justified in adopting that meaning." But 
if the language used indicates the opinion of the legislature of what 
the law was rather than an intention to change it, their mistaken 
opinion concerning the law "does not make the law." (12 Whea, 
148, 149, 150. P. M. Gen. v. Early.) In that case, the question 
arose on the act of 1815, which directed, that the District Court of 
the United States shall have cognizance concurrent with the courts 
and magistrates of the several states, and the Circuit Courts of the 
United States, of all suits, where they, or any of their officers, were 
plaintiffs : this court held that these words gave jurisdiction to the 
Circuit Courts, though it did not exist before ; thinking that it was 
plainly intended as a declaratory act, they felt justified in adopting 
their meaning. When such cautious language is used on a mere 
question of jurisdiction, I may safely assume it as a clear principle, 
that on a question of property, of a favoured right, the act of 1802 
will not be favourably or benignly construed against it, so as to 
throw impediments to its vesting or enjoyment, by equitable construc- 
tion, refined implication, or an adoption of a mere legislative opinion, 
as a declaratory law. This would be in opposition to the principles 
laid down in the preceding case, and to all the canons of the law in 
tihe exposition of statutes : for the act of 1802 does not profess to 



162 

prescribe for the future any other rule of construing the act of 1790, 
than what had prevailed before, or to make any provision essential 
to the right, which was in its terms only directory. The words 
amount to no more than a legislative opinion on the effect of a 
former law, which is not enough to even justify this court in adopting 
it, unless " Congress has explained its meaning too unequivocally to 
be mistaken," that the act was intended to be a distinct, substantive, 
prospective law, plainly declaring and enacting a new rule for the 
future. 

There is nothing of this kind in the act. "He shall, in addition to 
the requisites enjoined,'''' &c. A requisite is merely a thing required, 
directed, or enjoined. The meaning is the same, whether the one or 
the other mode of expression is used. The direction of a law is as 
imperative as a requisition, or an injunction. The question is not, 
what is a requisite, but for what purpose it is enjoined, to secure, 
grant, or create a right of property, a remedy for its violation, or a 
right to recover the penalties and forfeitures prescribed by statute. 
Every thing directed by the act of 1790 is a requisite enjoined : the 
recording the title to secure the copy-right, the publishing in a news- 
paper to give the penalties and forfeitures, and the delivery to the 
secretary of state a copy " to be preserved in his office.'''' The act of 
18(32 adds another, to give information by the publication of the record 
on the title-leaf, before he shall be entitled to the benefit of the act : 
this is the whole eifect of the first section, which is intended for no 
other purpose. Had it been intended to make the delivery of a 
copy to the secretary of state essential, either to the right of pro- 
perty, under the first section of the act of 1790, or to the penalties, 
&c. under the second, or to have enacted a declaratory law, making 
the act which was a requisite only for one purpose, an indispensible 
condition to any legal security to the copy-right; the author would 
not have been left in the perfect enjoyment of his rights to all the 
penalties and forfeitures created for his benefit by the second section 
of the act of 1790. Something would have been added, which would 
have made it the declared sense and enactment of Congress, that he 
should enjoy nothing, unless he performed every thing required ; and 
that something must be made essential by an express provision by 
legislation, or what is tantamount. This court is not justified in 
adopting as a declaratory act, a mere opinion of the legislature, in- 
ferred from the use of the words " requisites enjoined ;" for such in- 
ference, if correct, is only an indication of a mistaken construction, 
which cannot make a law. A similar question arose on the fifth sec- 
tion of the statute of Anne, which directed a deposit of nine copies 
of each book for certain libraries, which had been uniformly held to 
be merely directory, the right to the copies attaching though they 



163 

were not deposited in Stationers' Hall. The statute 41 Geo. llf, 
provided, " that in addition to the nine copies now required by law to be 
delivered, &c. one other copy shall, in like manner, be delivered," 
&c. It was contended that this was a legislative declaration of the 
construction of that section of the statute of Anne, which was bind- 
ing on the court ; but the King's Bench refused to adopt it, as they 
deemed it an evident " misconstruction, not a positive interpretation 
of a former act, imposed by the legislature in a subsequent act : but 
by the provisions which the legislature have made, they seem to have 
apprehended that such was the construction of the statute of Anne." 
(16^^.318.333.) The established rules of law must lead to the same 
conclusion in the present case. 

The question is, whether the act of 1802 either abrogates any right 
secured to authors by the act of 1790, imposes conditions upqn the 
vesting of any right not before conditional or limited, or makes it 
our duty so to construe the former law, as to make it conform to the 
construction which may seem agreeable to the opinion of the legis- 
lature as indicated in the latter. 

" Acts of parliament ought not, by any constrained construction 
out of the general words of a subsequent act, to be abrogated, but 
ought to be maintained and supported with a favourable and benign 
interpretation, to abrogate as little as may be." (11 Co. 63.- a. b.) 
" A subsequent act, which may be reconciled with a former one, shall 
not be a repeal of it." (11 Co. 63. b. 1 Bl. Com. 89. 5 Com. 
Dig. by Day, 325.) " A later statute, general and affirmative, does 
not abrogate a former, which is particular." (6 Co. 19. b.) The 
bare recital in a statute is not sufficient to repeal the positive pro- 
visions of a former statute, without a clause of repeal. (2 D. <^ E. 
365.) The sense of words used in an explanatory act is not to be 
extended by equity, but their meaning, this being a legislative expo- 
sition of a former act, must be strictly adhered to. (4 Bac. Ab, 650.) 
Nor shall a statute be expounded by equity to overthrow an estate, 
or to take away a right, a fortiori, to expose a party to a penalty. It is 
to be hoped, that the time is far distant when any court will extend 
the words of a penal statute beyond their plain uncontroverted mean- 
ing, for the purpose of forfeiting an existing right, or the infliction of 
fines and penalties. 

It seems to me, therefore, to be the clear result of these cases, and 
rules of construction, that the first and second sections of the act of 
1790, are in full force ; that the right of property, and to the penal- 
ties and forfeitures, are neither abrogated nor made dependent on the 
performance of any act not essential to the title by its terms, as ju- 
dicially expounded, and that the act of 1802 is not declaratory of any 



164 

new rule for the future, as a legislative act, save in the one additional 
requisite. 

Congress have given to it the same practical construction in the 
act of 1831. The only requisites which it enjoins upon the author 
are, that he shall record a copy of the title with the clerk of the Dis- 
trict Court, deposit a copy of the book in his office, and publish a 
copy of the record on the title-leaf. He is not required or directed 
to make any publication in a newspaper, or to deposit a copy with 
the secretary of state. This is a fair ground of inference that these 
two requisites were never deemed by the legislature to be essential 
to the vesting the title, or they would have been retained. Indeed, 
when we look at the nature of these acts, there appears no reason 
why they should be so considered. A publication in any newspaper, 
printed any where in the United States for four weeks, would be a 
compliance with the law : it cannot be pretended that this would 
answer any valuable purpose as notice, or for information to warn 
any person from invading the copy-right. The publishing the copy 
of the record on the title-leaf, as directed by the act of 1802, was to 
" give information." It was effectual notice, for none who would 
look at the book would fail to see the impress of copy-right on the 
title-page, or the next succeeding one. So that none could offend 
ignorantly. Whatever reasons, therefore, there might be for requiring 
a publication in a newspaper when no other notice was required, 
they wholly ceased, when another more efficient notice was pre- 
scribed : the former was mere legal implied notice ; the latter was a 
notice in fact, which no man could either overlook or mistake. This 
affords, to my mind, a conclusive reason why this act should be 
deemed merely directory, because if the publication was made, it 
was no notice in fact ; if omitted, it injured no one, and the law of 
1802 provided an effectual practical substitute by notice in fact. The 
delivery of a copy of the book to the secretary of state could not 
operate as notice, or be of any importance to the public : the law 
directs no record of the delivery, or any mark to be affixed to the 
book, to show that it was delivered in order to secure the copy-right, 
nor could it be distinguished from the mass of books in the library 
of the department. Congress no doubt intended the fourth section 
of the act of 1790, as the Parliament did the fifth section of the sta- 
tute of Anne, but directed the delivery of only one copy of the book 
instead of nine, for which there was a sufficient reason, in the com- 
plaints of the printers and booksellers in England, of the heavy tax 
which was imposed on them for the benefit of the libraries of the 
universities and colleges, the extent of which may be seen mlMaug- 
ham on Literary Property. 



165 

In this particular the act of 1831 is strongly indicative of the sense 
of the legislature that the act was not essential to the right, for the 
author is now required only to deliver a copy to the clerk, who is 
directed to transmit it to the secretary of state. 

This is the more apparent, when we connect this law with the 
decision of Judge Washington in Cox v. Ewer, which was first pub- 
lished in 1829, and the decision of the Supreme Court of Connecticut 
in 1808, which must be presumed to have been well known to the 
members of the judiciary committee who framed this law. It will be 
observed, that the fourth section is left open to the same construction 
that is given in those cases to the third and fourth sections of the act 
of 1790, which is a legislative adoption of the rule laid down ; the 
direction to the author to deliver the copy to the clerk, as well as to 
the clerk to transmit it to the secretary of state, are in distinct sen- 
tences, wholly unconnected with the preceding part of the sentence, 
making the record of the title essential to the copy-right. On the 
other hand, the fifth section, which makes the publication on the 
title-leaf an essential requisite in express terms, is a plain legislative 
declaration tl)at the delivery of the copy of the book is not so, 
expressio unias, est exclusio altei-ias, is a universal maxim in the con- 
struction of statutes, (6 Pet. 725.) thus excluding all grounds for 
construing the act of 1831 as Judge Washington had construed the 
act of 1802. Taking them in connexion with the act of 1790, as 
laws in pari materia, I cannot believe that it was ever intended by 
Congress, that any publication in a paper, or delivery of the book, 
should be indispensable to the vesting, as well as enjoyment of the 
right. These directions are in themselves so entirely unimportant 
for any practical purpose, especially in a case like the present, where 
the respondents had the most ample notice in fact of the claim and 
possession of the copy-right by the complainants, that 1 can perceive 
no reasonable ground for any other conclusion. Admitting, to its 
full extent, the obligation of judges to follow the words of a law, 
however unreasonable, if they are explicit, and do not admit of con- 
struction, 1 cannot overlook general usage, or the reason and rule of 
the common law, in the construction of laws which are doubtful in 
their terms, or so construe them against common right or reason, as 
to make them work a wrong, or where a right is given by particular 
words, adjudge it to be taken away by subsequent general words. 
{1 Bl. Com. 91. 19 ri?i. Abr. 511. 528. 5 Day. Cam. Dig. 326. 330. 
4 Bac. 644. 650.) If reason is to be at all applied to the acts of 
Congress, if the elementary rules of the law are to be guides to the 
interpretation of statutes, I am utterly at a loss to divine one, which 
can authorize the construction which the counsel for the respondents 
put upon the act of 1802. All semblance of reason for making the 
21 



166 

delivery of a copy to the secretary of state essential to a copy-rigtit 
in the reports of the decisions of this court, seems to me to disappear 
before the act of 1817, which requires the reporter to deposit eighty 
copies in the office. As a matter of notice to the respondentSj or of 
any concern to the public, the difference between tiie delivery of 
eighty or eighty-one copies in the same office, is certainly extremely 
small ; if the object of the law was to have the book identified, it 
could as well be done by any one of the eighty copies delivered under 
the reporter's, as by the one delivered under the copy-right act. The 
latter has no ear-mark by which it can be distinguished from the 
others ; and surely it is testing the reason of the law by a very paltry 
standard, when an important right of property is made to depend on 
the question, whether a book was placed on the shelves of the 
library, or in the lumber room of the department of state, under the 
one law or the other ; in other words, whether it was done by Mr. 
Wheaton the author, by Mr. Wheaton the reporter, or by Mr. Do- 
naldson the purchaser. The book is where it ought to be, each copy 
has the impress of copy-right on the title-leaf, and human wisdom 
cannot discover which copy is the one so essential to secure the 
right ; nor has the law directed any mark to be put upon it, a record 
of the delivery to be made, or a certificate to be given to the author, 
as is directed in the recording the copy of the title ; nor is any notice 
of the delivery directed to be published. 

It is proved and admitted that eighty copies of the last eleven 
volumes were deposited, under the act of 1817, in the department 
of state. 

Now a very simple question arises, shall the omission to deliver the 
one additional copy, annul the righi of a reporter to the interference 
of a court of equity for the protection of a quiet and peaceable pos- 
session and enjoyment of property claimed under colour of law 
during fourteen years, against a party who has acted in the fulness 
of actual notice. The spirit of the law forbids it. In England the 
omnipotence of Parliament is not potent enough to induce its courts 
to enforce a law which is against common right and reason. The 
common law shall control and adjudge it void. (5 D. C. D. 331. 
19 Yin. 512. 513. pi. 15. 1 Bl. Com. 91. 8 Co. 118. a.) It is 
enough for the purposes of this case, that such effect be not caused 
by construction as to make a law unreasonable, absurd, or unjust, 
when its terms are not too explicit for explanation, or its mandate 
too imperative to be disregarded. 

That the legislature shall never he presumed to exact any thing as 
a condition to the vesting or enjoyment of a right, which is repug- 
nant to reason, justice, or the settled rules of the common law, is a 
rule of universal application, on which this court has acted against the 
express words of an act of Congress. 



167 

The sixty-fifth section of the collection act of 1799, authorizes the 
District Court to continue a suit on a revenue bond, " until the next 
succeeding term, and no longer:" yet it has been twice decided that 
" the legislature intended no more than to interdict the party from 
an imparlance, or any other means or contrivances for mere delay :" 
not to bar the party from any defence to the suit on the merits. 
" And certainly we ought not, in common justice, to presume such 
an intention without the most express declarations," (6 Pet. 644. 
S. P. January term, 1834.) 

I think the present a case which calls for the application of the 
same principle ; there can be none presented for my consideration 
in which there is less reason for extending the provisions of a law by 
equity, so as to defeat a right of property by construction, or in 
which there are more cogent ones for the most liberal and benign in- 
terpretation of the laws enacted for its security. 

When the law points an author to certain acts, on the performance 
of which his rights to its benefits are declared to depend, he has 
notice of his danger, and omits them at his peril ; but he is thrown 
oflT his guard by a provision, merely directory, explanatory, or con- 
structive of a former law, to which the legislature attach no legal 
consequence. It would be, in my opinion, an imputation on the 
faith of the legislature, to presume that they intended to make any 
thing indispensable to the title which they had not declared to be so ; 
the author, whose property would be deprived of security, under 
which it had been placed, might justly complain of the want of notice 
of his danger ; and the duty of a court would seem to me a plain 
one, not to permit it to become extinct, unless the law compelled them 
to surrender the justice of the case to its positive commands. I can 
perceive in the act of 1802 no such provisions, or any words which 
can warrant the construction contended for; considering this and 
the act of 1790. as involving only a question of property. 

But there is another view of the act of 1802, which is inseparably 
connected with the copy-right. 

. By the fourth section, a penalty of one hundred dollars is imposed 
on any person who publishes a book with the impress of copy-right, 
if he has not legally acquired it. (2 Slori/'s ed. 867.) 

This, then, is a penal law, by which a penalty has been incurred 
for the publication of every volume of Wheaton's Reports, either in a 
first or second edition. If he has not secured the copy-right according 
to law, the penalty attaches for claiming property in them, for ^^im.' 
pressing thereon that the same has been entered according to act of 
Congress, or words purporting the same, or that the copy-right 
has been acquired." 

The same assertion in print, however strongly the author may be 



^168 

convinced of its truth in law and fact, is made at the peril of a 
heavy penalty. The law is express : if he has not legally acquired the 
copy-right, the penalty must be paid to a common informer and 
the United States. The author's copy-right and his money share a 
common fate. If, " according to the course and principles of courts 
of equity," by which the relief asked for is to be granted or refused, 
we are bound or at liberty to so construe the laws concerning copy- 
right, as to adjudge that the complainants are entitled to no relief, 
unless they prove, before a jury, the publication of the record of the 
title, and the delivery to the secretary, we by the same decree declare 
them liable to a penalty if sued for in two years. So that whatever 
construction the acts of 1790 and 1802 shall receive on the question 
of property, becomes fastened on them as a question of a penal for- 
feiture, and must be made by the same rules. 

The whole question then is, whether such laws shall be construed 
strictly, so as to save both property and a penalty, or liberally, be- 
nignly, and by equity, to forfeit a right, and subject the party to a 
penal action for claiming it ; the controversy is narrowed to this 
point, and the rights of the litigant parties depend upon the rule by 
which such a statute must be expounded. The foregoing are the 
reasons on which I have come to the conclusion, that it must be so 
construed as to avoid all forfeitures and penalties not imposed or in- 
curred by plain, express enactments, the consequence of which ought 
to be, a decree for an account, and a perpetuation of the injunction^ 



APPENDIX. 



Chap. 42. [15.] An act for the encouragement of learning, by securing the 
copies of maps, charts, and books, to the authors and proprietors of such 
copies, during the times therein mentioned. 

§ 1. Be it enacted, ^c. That from and after the passing of this act, the au- 
thor and authors of any map, chart, book, or books, already printed within these 
United States, being a citizeia or citizens thereof, or resident within the same, 
his or their executors, administrators, or assigns, who hath or have not 
transferred to any other person the copy-right of such map, chart, book, or 
books, share, or shares thereof; and any other person or persons, being a 
citizen or citizens of these United States, or residents therein, his or their exe- 
cutors, administrators, or assigns, who hath or have purchased, or legally 
acquired the copy-right of any such map, chart, book, or books, in order to 
print, reprint, publish, or vend the same, shall have the sole right and liberty 
of printing, reprinting, pubhshing, and vending such map, chart, book, or 
books, for the term of fourteen years, from the recording the title thereof in 
the clerk's otfice, as is hereinafter directed : And that the author and authors 
of any map, chart, book, or books, already made and composed, and not 
printed or published, or that shall hereafter be made and composed, being a 
citizen or citizens of these United States, or resident therein, and his or their 
executors, administrators, or assigns, shall have the sole right and hberty of 
printing, reprinting, publishing, and vending, such map, chart, book, or books, 
for the like term of fourteen years, from the time of recording the title 
thereof in the clerk's office, as aforesaid. And if at the expiration of the 
said term, the author or authors, or any of them, be living, and a citizen 
or citizens of these United States, or resident therein, the same exclusive 
right shall be continued to him or them, his or their executors, administra- 
tors, or assigns, for the further term of fourteen years : Provided, he or 
they shall cause the title thereof to be a second time recorded, and published 
in the same manner as is hereinafter directed, and that within six months 
before the expiration of the first term of fourteen years aforesaid. 

§ 2. That if any other person or persons, from and after the recording 
the title of any map, chart, book, or books, and publishing the same as aforesaid, 
and within the times limited and granted by this act, shall print, reprint, pub- 
lish, or import, or cause to be printed, reprinted, published, or imported, from 
any foreign kingdom or state, any copy or copies of such map, chart, book, 
or books, without the consent of the author or proprietor thereof, first had 
and obtained in writing, signed in the presence of two or more credible wit- 
nesses ; or knowing the same to be so printed, reprinted, or imported, shall 
publish, sell, or expose to sale, or cause to be published, sold, or exposed to 
sale, any copy of such map, chart, book, or books, without ^uch consent first 
had and obtained in writing as aforesaid, then such offender or oflfenders 
shall forfeit all and every copy or copies of such map, chart, book, or books, 
find all and every sheet and sheets, being part of the same, or either of them, 
to the author or proprietor of such map, chart, book, or books, who shall forth, 
with destroy the same : And every such offender and offenders, shall also 
forfeit and pay the sum of fifty^ cents for every sheet which shall be found m 



170 

his or their possession, either printed or printing, published, imported, or ex- 
posed to sale, contrary to the true intent and meaning of this act, the one 
moiety thereof to the author or proprietor of such map, chart, book, or books, 
who shall sue for the same, and the other moiety thereof to and for the use of 
the United States ; to be recovered by action of debt, in any court of record 
in the United States, wherein the same is cognizible. Provided always, That 
such action be commenced within one year after the cause of action shall 
arise, and not afterwards. 

§ 3. That no person shall be entitled to the benefit of this act, in cases 
where any map, chart, book, or books, hath or have been already printed and 
published, unless he shall first deposit and in all other cases, uiJess he shall, 
before pubUcation, deposit a printed copy of the title of such map, chart, 
book, or books, in the clerk's office of the district court where the author or 
proprietor shall reside : And the clerk of such court is hereby directed and 
required, to record the same forthwith, in a book to be kept by him for that 
purpose, in the words following, (giving a copy thereof to the said author or 
proprietor, under the seal of the court, if he shall require the same.) "Dis- 
trict of to wit : Be it remembered, That on the 

day of in the year of the 

independence of the United States of America, A. B. of the said district, hath 
deposited in this office the title of a map, chart, book, or books, (as the case 
may be,) the right whereof he claims as author or proprietor, (as the case 
may be,) in the words following, to wit : [here insert the title :] in conformity 
to the act of the Congress of the United States, entitled " An act for the en- 
couragement of learning, by securing the copies of maps, charts, and books, 
to the authors and proprietors of such copies, during the times therein men- 
tioned." C. D. clerk of the district of ." For which the 
said clerk shall be entitled to receive sixty cents from the said author or pro- 
prietor, and sixty cents for every copy, under seal, actually given to such 
author or proprietor as aforesaid. And such author or proprietor shall, 
withm two months from the date thereof, cause a copy of the said record to 
be published in one or more of the newspapers printed in the United States, 
for the space of four weeks. 

§ 4. That the author or proprietor of any such map, chart, book or books, 
shall, within six months after the publishing thereof, deliver, or cause to be 
delivered, to the secretary of state, a copy of the same, to be preserved ui his 
office. ■ 

§ 5 That nothing in this act shall be construed to extend to prohibit the 
importation, or vending, reprinting, or publishing, within the United States, of 
any map, chart, book, or books, written, printed, or published, Uy any person 
not a citizen of the United States, in foreign parts or places without the juris, 
diction of the United States. 

& 6. That any person or persons, who shall print or publish any manu- 
script, without the consent and approbation of the author or proprietor thereof, 
first had and obtained as aforesaid, (if such author or proprietor be a citizen 
of, or resident in these United States,) shall be liable to suffer and pay to the 
said author or proprietor, all damages occasioned by such injury, to be re- 
covered by a special action on the case, founded upon the act, in any court 
having cognizance thereof, 

& 7. That if any person or persons shall be sued or prosecuted for, any 
matter, act, or thing, done under or by virtue of this act, he or they may 
plead the general issue, and give the special matter in evidence. 'iAp. 
proved, May Z\,VtQO.'] 



171 

Chap. 44. [17. [ An act for giving effect to an act, entitled "An act to 

establish the judicial courts of the United States," within the state of North 

Carolina. 

§ 1. Be it enacted, SfC That the act, entitled " An act to establish the 
judicial courts of the United States," shall have the lilte force and effect 
within the state of North Carolina, as elsewhere within the United States. 

§ 2. That the said state shall be one district, to be called North Carolina 
district ; and there shall be a district court therein, to consist of one judge, 
who shall reside in the district, and be called a district judge, and shall hold 
annually four sessions ; the first to commence in July next, and the other 
three sessions, progressively, on the like Monday of every third calendar 
month afterwards. The stated district court shall be held at the town of 
Newbem. 

§ 3. That the said district shall be, and the same is hereby, annexed to the 
southern circuit : And there shall be held annuall_y, in the said district, two 
circuit courts ; the first session of the circuit court, shall commence on the 
eighteenlTi day of June next, the second session on the eighth day of Novem- 
ber next, and the subsequent sessions on the like days of every June and 
November afterwards, except when any of the days shall commence on the 
next day following. And the sessions of the said circuit courts shall be held 
at Newborn. 

§ 4. That there shall be allowed to the judge of the said district, the 
yearly compensation of fifteen hundred dollars, to commence from his ap- 
pointment, and to be paid at the treasury of the United States, in quarterly 
payments. \^Approved, June 4, 1790.] 



Chap. [36.] An act supplementary to an act, entitled "An act for the en- 
couragement of learning, by securing the copies of maps, charts, and books, 
to the authors and proprietors of such copies, during the time therein men- 
tioned," and extending the benefits thereof to the arts of designing, en- 
graving, and etching historical and other prints. 

§ 1. Be it enacted, ^c. That every person who shall, from and afi;er the 
first day of January next, claim to be the author or proprietor of any maps, 
charts, book, or books, and shall thereafter seek to obtain a copy-right of the 
same agreeable to the rules prescribed by law, beibre he shall be entitled to 
the benefit of the act, entitled " An act for the encouragement of learning, by 
securing the copies of maps, charts, and books, to the authors aud proprietors 
of such copies, during the time therein mentioned," he shall, in addition to 
the requisites enjoined in the third and fourth sections of said act, if a book 
or books, give information, by causing a copy of the record which, by said 
act, he is required to publish in one or more of the newspapers, to be inserted 
at full length in the title-page, or in the page immediately following the title, 
of every such book or books ; and if a map or chart, shall cause the follow- 
ing words to be impressed on the face thereof, viz : " Entered according to 

act of congress, the day of 18 [here insert the date when 

the same was deposited ui the office] by A B, of the state of 

[here insert the author's or proprietor's name, and the state in which he 
resides.] 

§ 2. That, from and after the first day of January next, every person, 
being a citizen of the United States, or resident within the same, who shall 
invent and design, engrave, etch, or work, or-, from his own works and in- 
ventions, shall cause' to be designed and engraved, etched, or worked, any 
historical or other print or prints, shall have the sole right and liberty of 
printing, reprinting, publishing, and vending, such print or prints, for the term 
of fourteen years from the recording the title thereof in the clerk's office, as 



172 

prescribed by law for maps, charts, book, or books : Provided, he shall per- 
form all the requisites in relation to such print or prints, as are directed in 
relation to maps, charts, book, or books, in the third and fourth sections of the 
act to which this is a supplement, and shall, moreover, cause the same entry 
to be truly engraved on such plate, with the name of the proprietor, and 
printed on every such print or prints, as hereinbefore required to be made 
on maps or charts. 

§ 3. That if any printseller, or other person whatsoever, from and after the 
said first day of January next, within the time limited by this act, shall en- 
grave, etch, or work, as aforesaid, or in any other manner copy or sell, or cause 
to be engraved, etched, copied, or sold, in the whole or in part, by varying, 
adding to, or diminishmg from, the main design, or shall print, reprint, or im- 
port for sale, or cause to be printed, reprinted, or imported for sale, any such 
print or prints, or any parts thereof, without the consent of the proprietor or 
proprietors thereof, first had and obtained, in writing, signed by him or them, 
respectively, in the presence of two or more credible witnesses ; or, knowing 
the same to be so printed or reprinted, without the consent of the proprietor 
or proprietors, shall publish, sell, or expose to sale, or otherwise, or in any 
other manner, dispose of any such print or prints, without such consent first 
had and obtained, as aforesaid, then such olfender or offenders shall forfeit 
the plate or plates on which such print or prints are or shall be copied, and 
all and every sheet or sheets (being part of, or whereon, such print or prints 
are or shall be copied or printed) to the proprietor or proprietors of such 
original print or prints, who shall forthwith destroy the same ; and further, 
that every such offender or offenders shall forfeit one dollar for eveiy print 
which shall be found in his, her, or their custody, either printed, published, 
or exposed to sale, or otherwise disposed of, contrary to the true intent and 
meanipg, of this act ; the one moiety thereof to any person who shall sue for 
the same, and the other moiety thereof to and for the use of the United 
States, to be recovered in any court having competent jurisdiction thereof, 

§ 4. That if any person or persons, from and after the passing of this act, 
shall print or publish any map, chart, book or books, print or prints, who have 
not leo-ally acquired the copy-right of such map, chart, book or books, print or 
prints, and shall, contrary to the true intent and meaning of this act, insert there- 
in, or impress thereon, that the same has been entered according to act of con- 
gress, or words purporting the same, or purporting that the copy-right thereof 
has been acquired : every person, so offending, shall forfeit and pay the sum of 
one hundred dollars, one moiety thereof to the person who shall sue for the 
same, and the other moiety thereof to and for the use of the United States, 
to be recovered by action of debt, in any court of record in the United States 
having cognizance thereof: Provided always, That in every case of forfei- 
tures hereinbefore given, the action be commenced within two years from 
the time the cause of action may have risen. [Approved, April 29, 1802.] 



Chap. 143. An act to extend the jurisdiction of the circuit courts of the 

United States to cases arising under the law relating to patents. 
. ^ I. Beit enacted, ^c. That the circuit courts of the United States shall 
have the original cognizance, as well in equity as at law, of all actions, suits, 
controversies', and cases, arising under any law of the United States, granting 
or confirming to authors or inventors the exclusive right to their respective 
writings, inventions, and discoveries ; and upon any bill in equity, filed by 
any party aggrieved in any such cases, shall have authority to grant in- 
junctions, according to the course and principles of courts of equity, to prevent 
the violation of the rights of any authors or inventors, secured to them by any 
laws of the United States, on such terms and conditions as the said courts 
may deeem fit and reasonable : Provided, however, That from all judgments 
and decrees of any circuit courts, rendered in the premises, a writ of error or 



173 

appeal, as the case may require, shall lie to the Supreme Court of the United 
States, in the same manner, and under the same circumstances, as is now 
provided by law in other judgments and decrees of such Circuit Courts. 
[Approved, February 15, 1819.] 



Chap. 16. An act to amend the several acts respecting copy-rights. 

§ 1. Be it enacted hy the Senate and House of Representatives of the 
United States of America, in Congress assembled. That from and after the 
passing of tliis act, any person or persons, being a citizen or citizens of the 
United States, or resident therein, who shall be the author or authors of any 
book, or books, map, chart, or musical composition, which may be now made 
or composed, and not prmted and published, or shall hereafter be made or 
composed, or who shall invent, design, etch, engrave, work, or cause to be 
engraved, etched, or worked from his own design, any print or engravuig, 
and the executors, administrators, or legal assigns of such person or persons, 
shall have the sole right and liberty of printing, reprinting, publishing, and 
vending such book, or books, map, chart, musical composition, print, cut, or 
engraving, in whole or in part, for the term of twenty-eight years from the 
time of recording the title thereof, in the manner hereinafter directed. 

§ 2. And be it further enacted, That if, at the expiration of the aforesaid 
term of years, such author, inventor, designer, engraver, or any of them, 
where the work had been originally composed and made by more than one 
person, be still living, and a citizen or citizens of the United States, or resi- 
dent therein, or, being dead, shall have left a 'widow, or child, or children, 
either or all then living, the same-exclusive right shall be continued to such 
author, designer, or engraver, or, if dead, then to such widow and child, or 
children, for the further term of fourteen years : Provided, That the title of 
the work so secured shall be a second time recorded, arid all such other regu- 
lations as are herein required in regard to original copy-rights, be complied 
with m respect to such renewed copy-right, and that within six months before 
the expiration of the first term. 

§ 3. And be it further enacted. That in all cases of renewal of copy-right 
under this act, such author or proprietor shall, within two months from the 
date of said renewal, cause a copy of the record thereof to be published in 
one or more of the newspapers printed in the United States, for the space of 
four weeks. 

§ 4. And be it further enacted. That no person shall be entitled to the 
benefit of this act, unless he shall, before publication, deposit a prmted 
copy of the title of such book, or books, map, chart, musical com- 
position, print, cut, or engraving, in the clerk's office of the district court of 
the district wherein the author or proprietor shall reside, and the clerk of such 
court is hereby directed and required to record the same thereof forthwith, in 
a book to be kept for that purpose, in the words following, (giving a copy of 
the title, under the seal of the court, to the said author or proprietor, when- 
ever he shall require the same :) " District of to wit : Be 
it remembered, that on the day of Anno Domini, 
A. B. of the said district, hath deposited in this office the title 
of a book, (map, chart, or otherwise, as the case may be,) the title of which 
is in the words following, to wit : (here insert the title ;) the right whereof he 
claims as author, (or proprietor, as the case may be;) in conformity with an 
act of Congress, entitled " An act to amend the several acts respecting copy, 
rights." C. D. Clerk of the District." For which record, the clerk shall 
be entitled to receive, from the person claiming such right as aforesaid, fifty 
cents ; and the like sum for every copy, under seal, actually given to such 
j)erson, or his assigns. And the author or proprietor of any such book, maj;>» 
22 



174 . 

chart, musical composition, print, cut, or engraving, shall, within three months 
from the publication of said book, map, chart, musical composition, print, cut, 
or engraving, deliver or cause to be delivered a copy of the same to the 
clerk of said district. And it shall be the duty of the clerk of each district court, 
at least once in every year, to transmit a certified list of all such records of copy, 
right, including the t.tles so recorded, and the dates of record, and also all the 
several copies of books or other works deposited in his office according ta 
this act, to the secretary of state, to be preserved in his office. 

§ 5. And be it further enacted. That no person shall be entitled to the 
benefit of this act, unless he shall give information of copy-right being secured, 
by causing to be inserted, in the several copies of each and every edition pub- 
lished during the term secured, on the title-page, or the page immediately 
following, if it be a book, or, if a map, chart, musical composition, print, cut, 
or engraving, by causing to be impressed on the face thereof, or if a volume 
of maps, charts, music, or engravings, upon the title or frontispiece thereof 
the following words, viz : " Entered according to act of Congress, in the 
year by A. B., in the clerk's office of the district court 

of " (as the case may be.) 

§ 6. And he itfurther enacted, That if any other person or persons, from 
and after the recording the t'tle of any book or books, according to this act, 
shall, within the term or terms herein limited, print, publish, or import, or 
cause to be printed, published, or imported, any copy of such book, or books, 
without the consent of the person legally entitled to the copy-right thereof, 
first had and obtained in writing, signed in presence of two or more credible 
witnesses, or shall, knowing the same to be so prmted or imported, publish, 
seU, or expose to sale, or cause to be published, sold, or exposed to sale, any 
copy of snch book without such consent in writmg ; then such offender shall 
forfeit every copy of such book to the person legally, at the time, entitled to 
the copy-right thereof; and shall also forfeit and pay fifty cents for every such 
sheet which may be found in his possession, either prmted or prmting, pub. 
lished, imported, or exposed to sale, contrary to the intent of this act, the one 
moiety thereof to such legal owner of the copy-right as aforesaid, and the 
other to the use of the United States, to be recovered by action of debt in any 
court having competent jurisdiction thereof. 

§ 7. And be itfurther enacted, That, if any person or persons, after the 
recording the title of any print, cut, or engraving, map, chart, or musical 
composition, according to the provisions of this act, shall, within the term or 
terms limited by this act, engrave, etch, or work^sell, or copy, or cause to be 
engraved, etched, worked, or sold, or copied, either on the whole, or by 
varying, adding to, or diminishing the main design, with intent to evade the 
law, or shall pi-int or import for sale, or cause to be printed or imported for 
sale, any such map, chart, musical composition, print, cut, or engraving, or 
any parts thereof without the consent of the proprietor or proprietors of the 
copy-right thereof, first obtained in writing, signed in the presence of two 
credible witnesses ; or, knowing the same to be so printed or imported with- 
out such consent, shall publish, sell or expose to sale, or in any manner dis- 
pose of, any such map, chart, musical composition, engraving, cut, or print, 
without such consent, as aforesaid ; then such offender or offenders shall for- 
feit the plate or plates on which such map, chart, musical composition, en- 
graving, cut, or print, shall be copied, and also all and every sheet thereof 
so copied or printed, as aforesaid, to the propi-ietor or proprietors of the^ 
copy-right thereof; and shall ilirther forfeit one dollar for every sheet of 
suc'i map, chart, musical composition, print, cut, or engraving, which may 
be found in his or their possession, printed or published, or exposed to sale, 
contrary to the true intent and meaning of this act ; the one moiety thereof 
to the proprietor or proprietors, and the other moiety to the use of the United 
States, to be recovered in any court having competent jurisdiction thereof. 
^ 8. And be it further enacted, That nothing in this act shall be construed 



175 

to extend to prohibit the importation or vending, printing, or publishing, of 
any map, chart, book, musical composition, prim, or engraving, written, com- 
posed, or made, by any person not being a citizen of the United States, nor 
resident vi^ithin the jurisdiction thereof. 

§ 9. And be it further enacted, That any person or persons, who shall 
print or publish any manuscript whatever without the consent of the author 
or legal proprietor first obtained as aforesaid, (if such author or proprietor 
be a citizen of the United States, or resident therein,) shall be liable to suffer 
and pay to the author or proprietor, all damages occasioned by such injury, 
to be recovered by a special action on the case founded upon this act, in any 
court having cognizance thereof: and the several courts of the United 
States empowered to grant injunctions to prevent the violation of the rights 
of authors and inventors, are hereby empowered to grant injunctions, in like 
manner, according to the principles of equity, to restrain such publication of 
any manuscript as aforesaid. 

§ 10. And he it further enacted. That if any person or persons shall be 
sued or prosecuted, for any matter, act, or thing, done under or by virtue of 
this act, he or they may plead the general issue, and give the special matter 
in evidence. 

§ 11. And be it further enacted, That if any person or persons, from and 
after the passing of this act, shall print or publish any book, map, chart, 
musical composition, print, cut, or engraving, not having legally acquired the 
copy-right thereof, and shall insert or impress that the same hath been en- 
tered according to act of Congress, or words purporting the same, every per- 
son so offending shall forfeit and pay one hundred dollars ; one moiety thereof 
to the person who shall sue for the same, and the other to the use of the 
United States, to be recovered by action of debt, in any court of record hav- 
ing cognizance thereof. 

§ 12. And be it further enacted. That in all recoveries under this act, 
either for damages, forfeitures, or penalties, full costs shall be allowed there- 
on, any thing in any former act to the contrary notwithstanding. 

§ 13. And be it further enacted, That no action or prosecution shall be 
maintained, in any case of forfeiture or penalty under this act, unless the 
same shall have been commenced within two }^ears after the cause of action 
shall have arisen. 

§ 14. And be it further enacted. That the "Act for the encouragement 
of learning, by securing the copies of maps, charts, and books, to the authors 
and proprietoi's of such copies during the times therein mentioned," passed May 
thirty-first, one thousand seven hundred and ninety, and the act supplemen- 
tary thereto, passed April twenty-ninth, one thousand eight hundred and two, 
shall be, and the same are hereby, repealed : saving, always, such rights as 
may have been obtained in conformity to their provisions. 

§ 15. And he it further enacted. That all and several the provisions of 
this act, intended for the protection and security of copy-rights, and providing 
remedies, penalties, and forfeitures, in case of violation thereof, shall be held 
and construed to extend to the benefit of the legal proprietor or proprietors 
of each and every copy- right heretofore obtained, according to law, during 
the term thereof, in the same manner as if such copy-i-ight had been entered 
and secured according to the directions of this act. 

§ 16. And be it furtlier enacted, That whenever a copy- right has been 
heretofore obtained by an author or authors, inventor, designer, or engraver, 
of any book, map, chart, print, cut, or engraving, or by a proprietor of the 
same : if such author or authors, or either of them, such inventor, designer, 
or engraver, be living at the passage of this act, then such author or authors, , 
or the survivor of them, such inventor, engraver, or designer, shall continue 
to have the same exclusive right to his book, chart, map, print, cut, or en- 
graving, with the benefit of each and all the provisions of this act, for the 
security thereof, for such additional period of time as will, together with the 



176 

time which shall have elapsed, from the first entry of such copy-right, make 
up the term of twenty-eight years, with the same right to his widow, child, or 
children, to renew the copy-right, at the expiration thereof, as is above pro. 
vided in relation to copy-rights originally secured under this act. And if 
such author or authors, inventor, designer, or engraver, shall not be hving 
at the passage of this act, then his or their heirs, executors, and administrators, 
shall be entitled to the like exclusive enjoyment of said copy-right, with the 
benefit of each and all the provisions of this act for the security thereof, for 
the period of twenty-eight years from the first entry of said copy-right, with the 
like privilege of renewal to the widow, child, or children, of author or authors, 
designer, inventor, or engraver, as is provided in relation to copy-rights ori- 
ginally secured under this act : Provided, That this act shall not extend to 
any copy-right heretofore secured, the term of which has already expired. 

[Approved, February 3, 1831.] 



